The Death of Google's Patents?

By John F. Duffy* [File Attachment (42 KB)]

            The Patent and Trademark Office has now made clear that its newly developed position on patentable subject matter will invalidate many and perhaps most software patents, including pioneering patent claims to such innovators as Google, Inc.

            In a series of cases including In re Nuijten, In re Comiskey and In re Bilski, the Patent and Trademark Office has argued in favor of imposing new restrictions on the scope of patentable subject matter set forth by Congress in § 101 of the Patent Act.  In the most recent of these three—the currently pending en banc Bilski appeal—the Office takes the position that process inventions generally are unpatentable unless they “result in a physical transformation of an article” or are “tied to a particular machine.”[1] Perhaps, the agency has conceded, some “new, unforeseen technology” might warrant an “exception” to this formalistic test, but in the agency’s view, no such technology has yet emerged so there is no reason currently to use a more inclusive standard.[2]  

            The Bilski en banc hearing attracted enormous attention, and yet there has remained a sense among many patent practitioners that the PTO’s attempts to curtail section 101 would affect only a few atypical patent claims.  The vast bulk of patents on software, business and information technology are thought by some not to be threatened because those innovations are typically implemented on a machine—namely, a computer—and the tie to a machine would provide security against the agency’s contractions of § 101.  Even if that view were right, the contraction of patent eligibility would be very troubling because the patent system is supposed to be designed to encourage the atypical, the unusual and the innovative.  But that view is wrong.

            The logic of the PTO’s positions in Nuijten, Comiskey and Bilski has always threatened to destabilize whole fields of patenting, most especially in the field of software patents.  If the PTO’s test is followed, the crucial question for the vitality of patents on computer implemented inventions is whether a general purpose computer qualifies as a “particular” machine within the meaning of the agency’s test.  In two recent decisions announced after the oral arguments in the Bilski case, Ex parte Langemyr (May 28, 2008) and Ex parte Wasynczuk (June 2, 2008),[3] the PTO Board of Patent Appeals and Interferences has now supplied an answer to that question: A general purpose computer is not a particular machine, and thus innovative software processes are unpatentable if they are tied only to a general purpose computer.  

            That stark answer should capture the attention of the many inventors and firms owning, or seeking to own, patents on innovative computer implemented processes, for the PTO’s new interpretation of patentable subject matter provides a clear avenue to reject patent applications and to invalid issued patents on all such innovations without regard to how meritorious or creative the innovation is.  To understand the sweeping implications of this new position, we need only to consider how the PTO’s position applies to the patent on Google’s PageRank technology, which is surely one of the most famous and valuable of all modern software patents and which is now almost surely invalid under the agency’s position. 

The Patent on Google’s PageRank Technology

            Google has constructed its web search technology using a “technology for ranking web pages” that the company refers to as “PageRank.”[4]   This patented technology was developed by Larry Page and Sergey Brin while they were attending Stanford University.[5]  Stanford owns the patent, and Google holds a perpetual license on the technology that is exclusive through at least 2011.[6]   The first claim of this important patent reads:  

A computer implemented method of scoring a plurality of linked documents, comprising:

obtaining a plurality of documents, at least some of the documents being linked documents, at least some of the documents being linking documents, and at least some of the documents being both linked documents and linking documents, each of the linked documents being pointed to by a link in one or more of the linking documents;

 assigning a score to each of the linked documents based on scores of the one or more linking documents; and

 processing the linked documents according to their scores.

U.S. Pat. No. 6,285,999 (filed Jan. 9, 1998, issued Sept. 4, 2001).[7].

            How does Google’s patent fare under the position advanced by the government in Bilski?  The first part of the government’s test recognizes the patentable eligibility for processes that result in “a physical transformation of an article.”  Google’s PageRank process seems to fail that part of the test, for the process merely generates a set of scores (which are merely numbers) that are then used to score or rank documents.  The documents themselves probably do not qualify as physical articles under the government’s restrictive test, for the documents are typically virtual webpages.  Moreover, even if the documents would count as physical articles, they are not transformed; the process merely ranks them.  The total output from the Google patent is just a mass of intangible data, and worse still it is intangible data about intangible documents. Simply put, there’s no “physical,” no “transformation,” and no “article.”  Indeed, Google’s process is even less physical than the process at issue in Bilski, which involved hedging the volatility in money flows.  Dollars and cents seem real and physical enough for many people.  If processes affecting money flows do not qualify as producing a physical transformation, it seems impossible to imagine that a process would qualify where it only scores virtual documents by virtual links to other virtual documents.  

            The second part of the PTO’s proposed eligibility test is thus crucial.  Unlike the patent claim in Bilski, which was not limited to machine implemented hedges, Google’s PageRank patent claim expressly states that it is “computer implemented.”  But the government’s test does not merely require a connection to a machine; it requires a tie to a particular machine.  

            On a recent panel held after the oral argument in Bilski, I raised the issue of Google’s patent claim with Ray Chen, the lawyer who represented the PTO in Bilski, and he asserted that, under the PTO’s position, the Google claim was probably still patentable.[8]  But in light of the PTO’s subsequent decisions in Langemyr and Wasynczuk, it is increasingly hard to see how Google’s PageRank patent survives.  Nor is that one patent an anomaly in Google’s portfolio.[9]  Indeed, other patents owned by Google include claims that do not even include a formal limitation to a computer.[10]  Google might have thought that the patent system would surely protect new technological developments that are highly creative and socially valuable.  The PTO’s new position proves that view mistaken.

Langemyr and Wasynczuk

            The patent claim at issue in Langemyr covers a “method executed in a computer apparatus” for producing a model of a physical system using a set of partial differential equations.[11]  Even though Langemyr’s claimed invention is more closely tied to the physical world than Google’s PageRank technology is—Langemyr is, after all, modeling the physical systems rather than scoring virtual documents by their virtual links to other virtual documents—the PTO Board still had little difficulty finding that Langemyr’s claimed process does not contain a “physical transformation” and therefore does not qualify as patentable subject matter under the first part of the PTO’s test.  The Board reasoned that the claimed process produced no “transformation of subject matter but merely an abstract mathematical expression that is created from the previous steps.”[12]  The process, the Board noted, “does not require any physical output into the real world.”[13]  Precisely the same can be said of Google’s patented process, which produces merely mathematical expressions—a set of ranks or scores—and lacks any physical output into the real world.

            Thus for both Langemyr and Google, patent eligibility under the PTO’s test comes down to the interpretation of the second part of the PTO’s test.  Both the Langemyr and Google patent claims are expressly limited to processes “executed” (Langemyr) or “implemented” (Google) on a general purpose computer, and the Langemyr decision holds that “the limitation that the method is ‘executed in a computer apparatus’ does not tie the method to a ‘particular machine.’”[14]  The key flaw in Langemyr’s claim, the PTO Board reasoned, was its general applicability to all computer:  “Any and all computing systems will suffice, indicating that the claim is not directed to the function of any particular machine. … Thus, the claimed method is not tied to ‘a particular machine,’ but rather is tied only to a general purpose computer.” [15] 

            In these crucial passages, the PTO Board has provided the foundation for rejecting and invalidating huge swaths of software patents, including not merely Langemyr’s claims, but those of Google, Microsoft, IBM and many other companies.  If we want to evaluate the PTO’s ongoing attempts to constrict § 101, it does not seem an understatement to say that the constriction is truly breathtaking, given that the PTO’s position pushes outside the patent system Google’s PageRank patent, even though that patent covers one of the most widely known and commercially successful innovations of our era.  

            This is not, however, the end of the story.  The PTO’s decision in Ex parte Wasynczuk provides one final twist so Kafkaesque as to strain credulity.  

            As in Langemyr, the invention at issue in Wasynczuk relates to a “computer-implemented” process for modeling physical systems.[16] As in Langemyr, the PTO Board in Wasynczuk holds the broadest claim in the application to be unpatentable subject matter because “the sole structural limitation recited is the ‘computer-implemented system’ of the preamble” and that limitation “is not any particular apparatus” because the computer could be “essentially any conventional apparatus that performs the claimed functions.”[17] 

            Yet unlike in Langemyr, the application in Wasynczuk also included a narrower claim in which “the first simulating step [of the claimed process] is performed on ‘a first physical computing device’ and the second simulating step is performed on ‘a second physical computing device.’”[18]  The PTO Board holds that claim to be patentable subject matter.  The Board concluded that the collection of the two “physical computing devices” operating together “is ‘a particular apparatus’ to which the process is tied, not simply a generic computing device for performing the steps.”[19]  Distribution of the process over two general purpose computing devices quite clearly seems to be the key to patentability in the Board’s view, for the Board emphasized that the narrower claim covered only the embodiment in Wasynczuk’s specification that “uses two computing devices” not the embodiment that “uses a single computer.”[20]  In sum, an innovative process is not patentable when operating on a single computer processor but is when operating on two processors, even though the Board recognizes that the process in the unpatentable claim “is essentially the method” set forth in the patentable claim.[21]  

            Google’s PageRank patent claim is of course not saved by the PTO’s caveat that two computer processors are better one when it comes to patentable subject matter.  The PageRank claim requires only computer implementation and is thus invalid under both Langemyr and Wasynczuk.  But the Wasynczuk definition of “particular machine” opens up vast possibilities for future litigation.  In an age when even simple laptops often contain multiple processors, many patent claims could be written as functioning on multiple “physical computing devices.”  Will such claims generally be patent eligible?  Will dual core processors operating on a single chip (e.g., Intel’s Centrino Duo® chip) constitute a “particular machine”?  Or will the processors have to be physically separate chips or physically separate computers?  Will the patent claims have to specify that certain steps occur only on one processor while other steps occur solely on the other?  Will the result be different if the processors share steps to some degree?  All these and many more fascinating questions will provide ample billable hours for patent attorneys even as inventors look on with utter horror and disbelief at the crucial importance the legal system is placing on distinctions that are technologically meaningless to the innovations sought to be patented. 

Requiem (?) for Google’s Patent 

            The apparent death of Google’s pioneering PageRank patent under the PTO’s new rule for patentable subject matter may be a cause for celebration among those who are philosophically opposed to property rights in innovation and are eager to confine the patent system’s ambit.  It will surely be cause for mourning among those who believe that allowing patents on cutting edge technologies has served the country well for more than two centuries and that a radical departure from the traditional approach would be unwise.  And it is likely to generate puzzlement among business people and innovators, who may wonder how agency decisions supposedly premised on the need for ensuring that “that the patent system be directed to protecting technological innovations”[22] have ended up rendering unpatentable innovations in search engine technology, computer modeling, bioinformatics and many other innovations in cutting edge fields related to software and information technology.

            Undeniably, however, the pallor now cast upon Google’s patents and many other software patents highlight the stakes in the Federal Circuit’s pending en banc decision in Bilski. The PTO Board’s reasoning in Wasynczuk also reveals that the agency’s proposed new rule for patentable subject matter will not produce certainty but will instead open up software patents to new and previously unimagined litigation over the precise scope of the concept of a “particular machine.” Vast industries of modern innovation must now wait to see whether the courts will follow the agency’s lead. 

---

[1] PTO Supp. Bilski Br. at 25 (argument section heading; initial capitalization omitted).  See also id. at 6 (heading of argument section C.1, stating that “a Section 101 ‘process’ must either be tied to a particular apparatus or transform an article to a different state or thing”) (capitalization modified). 

[2] Id. at 9. 

[3] The decisions are available at, respectively, http://www.uspto.gov/web/offices/dcom/bpai/its/fd081495.pdf and http://www.uspto.gov/web/offices/dcom/bpai/its/fd081496.pdf.

[4]  Google Form S-1, Registration Statement (filed April 29, 2004) at 65.

[5] Id. at 67.

[6]  Id.  Google also stated in its SEC filing that patents are one of the legal mechanisms used to protected Google’s proprietary technology and that the company “rigorously control[s] access to proprietary technology.”  Id.  In light of these statements, made under pain perjury sanctions, there is no basis for believing anything other than that the PageRank patent is—or, in light of PTO’s new positions, was—an extremely valuable piece of intellectual property.

[7] The other claims in the PageRank patent include no more connections to a machine than does the first claim.  Twenty-seven of the twenty nine claims are directed to “computer implemented” processes that, like claim 1, have no limitation to a particular type of computer.  Two claims (18 & 19) are directed to software-on-a-disk claims (so-called Beauregard claims), with the claim covering a “computer-readable medium” containing instructions for the PageRank scoring process.

[8] See Tony Dutra, Bilski Opponents Renew Debate on Patentability Formalisms and Standards (May 30, 2008) (reporting my debate with Chen on whether the PTO’s position undermined Google’s patents). 

[9] See, e.g., U.S. Pat. No. 6,678,681 (issued Jan. 13, 2004) (setting forth a “computer implemented method of extracting information from a database”); U.S. Pat. No. 6,865,575 (March 8, 2005) (setting forth a “computer implemented method” for “using a modified index to provide search results in response to an ambiguous search query”).

[10] For example, the first claim in U.S. Patent No. 6,526,440 (issued Feb. 25, 2003), which discloses an improved search engine technology, does not even expressly include the limitation that the process must be computer implemented:

1. A method of identifying documents relevant to a search query, comprising:

obtaining an initial set of relevant documents from a corpus;

ranking the initial set of documents to obtain a relevance score for each document in the initial set of documents;

calculating a local score value for at least two of the documents in the initial set, the local score value quantifying an amount that the at least two documents are referenced by other documents in the initial set of documents; and

refining the relevance scores for the documents in the initial set based on the local score values.

See also U.S. Pat. No. 7,222,299 (issued May 22, 2007) (claiming a new method for “detecting quoted text” that is not limited to computer implemented versions of the method). 

[11] Claim 1 in Langemyr’s application reads:    

1. A method executed in a computer apparatus for creating a model of a combined physical system having physical quantities by representing physical quantities of the combined physical system in terms of a combined set of partial differential equations, the method comprising:

representing at least one of a plurality of systems as two or more selected application modes modeling physical quantities of said one of said plurality of systems;

determining a set of partial differential equations for each of the two or more selected application modes, parameters of the partial differential equations being physical quantities of corresponding ones of said plurality of systems;

forming said combined set of partial differential equations using the determined sets of partial differential equations associated with said one of said plurality of systems; and

outputting a model of said combined physical system based on said combined set of partial differential equations for the two or more selected application modes for the said one of said plurality of systems, whereby the model represents a mathematical expression of the physical quantities of the combined physical system.

Langemyr, BPAI Slip Op. at 2-3. 

[12] Id. at 21.

[13] Id.

[14] Id. at 22. 

[15] Id. at 22, 24.  The Board also rejected Langemyr’s software-on-a-disk claim (Beauregard claims), explaining that it could “see no reason why placing instructions on a computer readable medium … should be treated any differently from the method of claim 1.”  Id. at 28. 

[16] Wasynczuk’s claim 1 reads: 

1. A computer-implemented system, comprising:

a first executing process that:

implements a first continuous-time model to simulate a first physical subsystem, the first model being programmed in a first language and having a first state variable; and

sends a first series of state-related numerical values, each numerical value reflecting information relating to the value of the first state variable at a different point t, in simulation time in the first model; and

a second executing process that:

receives said first series of state-related numerical values from said first executing process without said first series of state-related numerical values passing through a central communication process;

implements a second continuous-time model to simulate a second physical subsystem, the second model being programmed in a second language and taking as an input values from said first series of state-related numerical values; and

outputs data representative of a state of the second continuous-time model.

Wasyczuk, BPAI Slip Op. at 2-3. 

[17] Id. at 25.

[18] Id. at 22.

[19] Id. 

[20] Id. at 22. 

[21] Id. at 25.

[22] Langemyr, Slip Op. at 8; Wasynczuk, Slip Op. at 12.   

Comments

[Yet Another Anon]

"The Patent and Trademark Office has now made clear that its newly developed position on patentable subject matter will invalidate many and perhaps most software patents."

This statement seems like an extreme interpretation of the USPTO position. The USPTO position, after all, relies upon the Supreme Court decisions in Benson, Flook, and Diehr.

[anonymous]

Perhaps the author should disclose that he's representing an amicus in the Bilski case and participated in oral argument against the PTO.

DDC Reply: Good point Anon -- Professor Duffy has long been a staunch supporter broadly interpreting the statutory subject matter limitations of Section 101. He is representing an amicus party in the Bilski case. He has participated as amicus in several other Section 101 cases - always arguing for a broad interpretation of the statute.

[Yet Another Anon]

Also Langemyr and Wasynczuk are not precedential BPAI decisions.

[Alan McDonald]

Maybe the PTO is finally implementing my test:

If the claim is nothing more than a computer making calculations that, given enough monkeys and calculators, could be done manually, there is no patentable subject matter.

[WTF?]

"If the claim is nothing more than a computer making calculations that, given enough monkeys and calculators, could be done manually, there is no patentable subject matter."

great standard, but why stop at calculations?... give them enough test tubes and throw out pharmaceuticals ... give them enough tools and throw out mechanical devices ... turns out that nothing is patentable subject matter! Wheeeeeeee

[anon2]

Let's just all hope that the new administration tosses out the monkeys that are running the patent office and brings in people that have some common sense and stops artificially limiting what can and can not be patentable based on non-technical gobbledy gook!!

[big hairy rat]

The real problem with software patents is that people are trying to lock down trivialities. Langemyr appears to be an attempt to patent the general idea of a computer algebra system designed to combine standard pdes for components of a physical structure into a master linked pde for the structure as a whole (combine the pde for air flowing around a wing with the pde for the flexing and vibration of the wing structure itself). That sort of user friendly front end should not be patentable unless there is something really clever about how the pdes are combined - using a computer to grind out standard algebra is surely not patentable given the current state of the art and has not been patentable since the late fifties.

The PTO needs to draw the line somewhere. This may not be the right place to draw it but Professor Duffy should be suggesting how the PTO should filter out crrp like Langemyr and Bilski and preserve genuinely interesting and important stuff like Page Rank. The PageRank idea of ranking a page according to the rankings of pages linking to it should not be patentable but how they did it should be patentable (IMHO):

http://www.rose-hulman.edu/~bryan/googleFinalVersionFixed.pdf

[pds]

One wonders if the UPSTO actually looks at the case law. My response to the above rejection would be to have the USPTO re-read the following cases:

http://digital-law-online.info/cases/22PQ2D1033.htm
http://www.ll.georgetown.edu/FEDERAL/judicial/fed/opinions/98opinions/98-1338.html

"But the government’s test does not merely require a connection to a machine; it requires a tie to a particular machine."
And a computer is not a particular machine???? One would think that by defining the machine as a computer, the scope of "machines" has been drastically reduced in number.

Got to love that USPTO logic (or lack thereof).

OK, time to vacate the premises before the 101 trolls start to arrive in mass.

[stepback]

I discuss yet another eye-poking physical transformation case here:
http://patentu.blogspot.com/2008/07/punched-drunk-eye-of-schrodingers-cat.html

[Bk]

John has been straining to motivate his philosophical predisposition toward patents on information processing for quite some time, and has had limited success. He uses Google as an example of a very successful tech company, but provides no evidence that Google really relied on patents (and neither does anybody else I've seen).

John's other means of motivating patents on information processing are also tenuous. We never believed that any creative act should be patentable---otherwise we'd be fine with storyline patents. He claims that Jefferson and the Congress of 1952 approve of patents on information so long as it is imprinted onto a physical substrate, but that claim has clearly been divisive in the courts, and intelligent people have seen it either way (depending on their philosophical predisposition).

I agree with him, by the way, that the multiple-computer distinction in Wasynczuk is tenuous, and I expect that it will superseded by better, fast. Unfortunately, John stays purely negative, and does not propose any alternative means of solving the practical problems the USPTO and the courts are facing right now.

John refers to "those who are philosophically opposed to property rights in innovation", which is clearly an attempt to insult those software companies (like Microsoft) that state an opposition to information processing patents due to serious, sometimes company-threatening problems with the new class of patents. It may perhaps be his real belief that all the billions of dollars in headaches are a fiction manufactured by a cabal of philosophers, but such a belief would have more weight if he himself could provide evidence that his support of patents on information and information processing wasn't itself an unfounded philosophical belief that patents are always good in all situations. Many authors have written on the practical problems caused by information patents, and John addresses none of them; the courts are grappling with these cases because there are real problems with the system, and John addresses none of them. All we get from this article is that John likes patents on information, and dislikes any court that disagrees with him on that, but that's nothing we can build on.

[pds]

"The PageRank idea of ranking a page according to the rankings of pages linking to it should not be patentable but how they did it should be patentable (IMHO)"

Once you limit patentability to the "how" then you've essentially opened the door to anybody to come up with a different way of implementing the same concept (i.e., the PageRank idea). Why get the patent when it is useless. Second thought, why disclose the idea when any patent obtainable therefrom wouldn't be worth the paper it was printed on. Ooops ... there blows that whole idea about rewarding inventors for their disclosure.

Also, how to you propose that we draw the line between the broad concept and one specific implementation? Should we limit this to just computer-implemented inventions or all inventions? How would this language read? Do we have to come up with 35 USC 101.5, which addresses these types of inventions.

It is like inventing ice cream only to be told that you can only choose one flavor to protect.

[pds]

"I discuss yet another eye-poking physical transformation case here:"

I looked at the link and the claims. I would say that the USPTO's decision is unbelievable, but I've read too many to be surprised by the BPAI's ineptness when it comes to 101 issues.

[curious]

Stepback -- thanks for bringing that "eye-poking" case to our attention

[Michael R. Thomas arguably the worlds only inventor of signifence.]

I think anything that is marketable or a new draw to a website should be patentable if it is not available offline.Obviously tying websites to machines has no revelance in this situation.This should be considered a new business method if it is unique and different and adds to the value of the business or is useful and desirable to the public. It should be inovative not trivial though.

[e6k]

""But the government’s test does not merely require a connection to a machine; it requires a tie to a particular machine."
And a computer is not a particular machine???? One would think that by defining the machine as a computer, the scope of "machines" has been drastically reduced in number.

Got to love that USPTO logic (or lack thereof).

OK, time to vacate the premises before the 101 trolls start to arrive in mass."

I'll only told you that I told you so. General computer does not equal particular machine just by itself. There are several cases where I saw this.

[e6k]

told*= tell

[e6k]

"Ooops ... there blows that whole idea about rewarding inventors for their disclosure."

Come on pds, you know that a huge number of patents issued right at this moment don't amount to anything for the inventor.

[Malcolm Mooney]

"why stop at calculations?... give them enough test tubes and throw out pharmaceuticals ... give them enough tools and throw out mechanical devices"

The answer to the question "why stop at calculations" is that "calculations" are merely symbolic embodiments of pre-existing mathematical relationships.

Is Google's success a result of its page ranking software? Of course not. It's success is a result of the fact that it's easy-to-use and elegant user interface blew everyone else's interface away. Nobody wanted to use any of those dumb search engines after they found Google's page without the banners and other garbage.

Is a minimal, elegant user interface patentable? No.

The emotional game that Professor Duffy plays depends on Google's popularity. But Google's popularity has little to do with Google's patents.

Sadly, some folks have drunk so much of the patent kool-aid that they believe without serious patent protection for software that people would have no incentive to write new software.

That's false and it's so plainly false that one has to question the veracity and motives of anyone claiming otherwise.

[big hairy rat]

"Once you limit patentability to the "how" then you've essentially opened the door to anybody to come up with a different way of implementing the same concept (i.e., the PageRank idea)."

That depends on what you think the PageRank idea is. There would be an almost unlimited number of ways of using link data to calculate page rankings. My view is that the idea of ranking pages using link data should not be patentable by itself (which would then cover every conceivable way of calculating page weights from the link data) but a particular way of doing so may be properly patentable. I think that the "how" is the essence of what should be patentable.

[Q]

is in re alappat no longer binding precedent?

hopefully examiners don't start taking this logic applied to process claims and applying it to apparatus claims.

i've been seeing examiners say that because the various units/sections/controllers/etc. are readable on a general purpose computer executing software, the apparatus claim does not comply w/ 35 USC 101. flat wrong.

[mess]

"Is Google's success a result of its page ranking software? Of course not. It's success is a result of the fact that it's easy-to-use and elegant user interface blew everyone else's interface away."

Perhaps you weren't using web search engines prior to Google had indexed a significant chunk of the web space. However, at the time, there were two types of indexes/search engines to turn to: (1) Yahoo-style indexing services, which were considered higher quality sources because humans did web page categorizing; and (2) Altavista-style search engines, which indexed many more web pages, but would generally turn up pages and pages of results of either irrelevant or low-quality hits (low quality became even worse once "search engine optimization" (i.e., web spamming) took off). With the search engines at the time, what you were looking for was typically SOMEWHERE in the index, but you either had to keep trying to hit on the right search term, or dig through pages and pages of results.

Contrast this with the results that Google would turn up. Even with relatively broad search terms, people generally got excellent results - good enough that Google could put up the "I'm feeling lucky" button, which would automatically forward you to the top hit for your query, and you would get reasonable results. On other search engines, such a button would have been useless for all but the narrowest of search terms.

They also had a lightweight interface, and fast servers, which certainly helped. However, other search engines copied this aspect of Google's services, without any real resultant gains.

In other words, the secret to Google's success isn't someone's obsession with a lightweight interface - it was their major leap forward in search result quality.

[Mark Nowotarski]

Not to be all nitpicky and stuff, but isn't it up to the Courts and not the USPTO to invadidate an issued patent?

[Lionel Hutz]

Malcolm,

Mathematics is only a language for expressing physical relationships, both theoretical and empirical.

Once again, using 101 to eliminate subject matter is laziness on the part of the PTO and diametrically opposed to the decisions in Alapat, Benson, Flook, and Diehr

[Lionel Hutz]

And Malcolm

Here's a fundamental question that hasn't been asked - who cares whether Google's success is based upon their patents? That applies to the majority of non-pharmaceutical companies' patents. Why not just go ahead and invalidate those patents as well?

[big hairy rat]

"Perhaps you weren't using web search engines prior to Google"

You're absolutely right. The first times I used Google it was preternatural how good the search results were compared to Altavista. I never went back.

[pds]

MM .... let's put Google to side, and let's hear your take on these claims:

120. A method for improving refractive ophthalmic treatment comprising:
* obtaining a first, pre-operative diagnostic measurement of an individual cornea of an eye;
* determining a first operative corneal ablation specification based on the first, preoperative diagnostic measurement;
* obtaining non-tissue removing perturbation data from the individual cornea before ablation to obtain a biodynamic response data from that individual cornea;
* obtaining a second, post-perturbation, preoperative diagnostic measurement of the individual cornea;
* correlating said non-tissue removing perturbation data with the biodynamic response data gathered from a statistically significant number of corneas; and
* establishing an individual customized laser ablation specification for corneal ablation for that individual cornea, based at least in part on said biodynamic response data.

101 subject matter or not?

[Malcolm Mooney]

"In other words, the secret to Google's success isn't someone's obsession with a lightweight interface - it was their major leap forward in search result quality"

If you say so. I was quite happy with HotBot or whatever that thing was called until I stumbled on Google and stuck with it because of its lightweight interface.

By the way, what is the "secret" to wikipedia's success?

[Malcolm Mooney]

"who cares whether Google's success is based upon their patents? "

I think Professor Duffy does, for one.

[Malcolm Mooney]

"120. A method for improving refractive ophthalmic treatment comprising:
* obtaining a first, pre-operative diagnostic measurement of an individual cornea of an eye;
* determining a first operative corneal ablation specification based on the first, preoperative diagnostic measurement;
* obtaining non-tissue removing perturbation data from the individual cornea before ablation to obtain a biodynamic response data from that individual cornea;
* obtaining a second, post-perturbation, preoperative diagnostic measurement of the individual cornea;
* correlating said non-tissue removing perturbation data with the biodynamic response data gathered from a statistically significant number of corneas; and
* establishing an individual customized laser ablation specification for corneal ablation for that individual cornea, based at least in part on said biodynamic response data.

101 subject matter or not?"

As written it reads on a purely mental process and, as such, is garbage.

Next.

[pds]

"By the way, what is the 'secret' to wikipedia's success?"

The one thing that many of the doomed websites of the late 90s/early 00s failed to have
.
.
.
.
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content ... now it they got that content is another story.

[pds]

"As written it reads on a purely mental process and, as such, is garbage."

When you get a chance .... no hurry ... explain to me the mental process you employ in performing the following steps:

"obtaining a first, pre-operative diagnostic measurement of an individual cornea of an eye"
"obtaining non-tissue removing perturbation data from the individual cornea before ablation to obtain a biodynamic response data from that individual cornea"
"obtaining a second, post-perturbation, preoperative diagnostic measurement of the individual cornea"

[Q]

"When you get a chance .... no hurry ... explain to me the mental process you employ in performing the following steps:"

why some combination of telekinesis with lasers produced solely by the power of the mind.

obviously.

what, you haven't seen the x-men?

[e6k]

I think I can probably handle this one. I don't believe MM was quite correct on the steps being purely mental. But they aren't tied to any machine, that's for sure.

"obtaining a first, pre-operative diagnostic measurement of an individual cornea of an eye"

Read a piece of paper with the measurements on it?

""obtaining non-tissue removing perturbation data from the individual cornea before ablation to obtain a biodynamic response data from that individual cornea""

Read another peice of paper?

""obtaining a second, post-perturbation, preoperative diagnostic measurement of the individual cornea""

Read another peice of paper.

[pds]

"why some combination of telekinesis with lasers produced solely by the power of the mind."

I knew MM had some weird sort of powers, but I didn't know what kind. The only question left to answer is whether he uses them for good or for evil. Actually, what am I saying .... he uses his powers for good ... his own good to the detriment of the patent system. Eventually, he'll make it to the USPTO with his combination of telekiness and laser eyes and burn all the buildings to the ground.

I can hear him laughing as he flies away ..... "now THAT is an example of an unpatentable mental process ... try to get your poo-poo software patents now!!!"

[pds]

"But they aren't tied to any machine, that's for sure"

Tell me again, how the measurements are obtained? They don't just magically appear on the piece of paper.

Even if someone wrote them down, the measurements still had to be obtained from something.

Just explain to me how you propose to obtain those measures, consistent with applicants' specification (i.e., so as to fall within some unstated claim construction), without the use of a machine, and I'll hop on the 6K and MM bandwagon.

[jk]

Let's not forget... 1) BPAI is not the Supreme Court, its discision is an opinion only. It is not law. 2) The party involved is Google. It has the deepest pocket one can imagine and it is not going to give up.

So, don't conclude anything, at least for now.

[Malcolm Mooney]

"Tell me again, how the measurements are obtained? They don't just magically appear on the piece of paper. Even if someone wrote them down, the measurements still had to be obtained from something."

As e6k noted, the practitioner of the claim may obtain the measurements simply by reading them or observing them. "Obtaining a measurement of the spectrum reflected by the iris", i.e., "I see your eyes are blue."

Does the claim require that the measurements be obtained to some degree of accuracy that is obtainable only through use of a machine? Nope. Does it require that the measurements are recorded on a piece of paper or entered into a computer? No. Does the claim require that the measurements so obtained are obtained for the first time by the practioner of the claim and not previously recorded by somebody else? Nope.

Claim drafting is not difficult. In fact, it's really really easy if you are trying to claim something really broad and unpatentable.

What's difficult is arguing that a claim like the one posted by pds should be read narrowly "just because." The reason it's difficult is because in the real world patentees and cautious potential infringers do not read claims that way. In fact, hardly anyone does except for district court judges who like getting overturned by the CAFC.

[sf]

Can anyone tell me what is the meaning of "transform". I mean, is there any court case that defines the meaning of "transform"?

[big hairy rat]

What is a general purpose computer. Hand held devices like a Blackberry can be programmed to function as a general purpose computer - does that make every modern cell phone and pda out there a general purpose computer?

[pds]

"Does the claim require that the measurements so obtained are obtained for the first time by the practioner of the claim and not previously recorded by somebody else? Nope."

Does the law require that the process be directly tied to the machine? Not as far as I can tell.

"'Obtaining a measurement of the spectrum reflected by the iris', i.e., 'I see your eyes are blue.'"
I very much doubt the spectrum of light reflected by the iris is a "pre-operative diagnostic measurement," given the broadest, reasonable claim construction consistent with the specification. Also, you haven't told me about how you were going to be "obtaining non-tissue removing perturbation data from the individual cornea before ablation to obtain a biodynamic response data from that individual cornea."

Finding a claim unpatentable under 35 USC 101 is not difficult. In fact, it's really easy if you ignore the ACTUAL language of the claims, and construe the claim language in an unreasonable manner inconsistent with applicants' specification.

In fact, I see it done all the time by examiners.

BTW: it is good to see you and 6K buddy, buddy again. You two deserve each other.

[pds]

"What is a general purpose computer. Hand held devices like a Blackberry can be programmed to function as a general purpose computer - does that make every modern cell phone and pda out there a general purpose computer?"

Does anybody actually have a definition of a general purpose computer from the Federal Circuit?

[Malcolm Mooney]

pds "obtaining non-tissue removing perturbation data from the individual cornea before ablation "

Obtaining data. Obtaining data. Obtaining data.

It seems to me that if the patentee wanted the claim to be limited to a method that was only infringed if the practitioner (by himself or in conjunction with another acting under the control of a mastermind) ACTUALLY perturbed the individual's cornea, then the patentee would have written the claim in that manner.

But instead the patentee wrote the claim to recite a step of "obtaining data."

The way I approach these sort of claim construction issues is to ask: when the owner of the patent is seeking to capitalize on the granted patent and the alleged infringer or potential licensee says, "we don't perturb the individual's cornea", will the patentee shrug and say "Oh we're sorry. You clearly don't infringe" ?

Maybe you should revisit the history of the LabCorp v. Metabolite case again to see how these things play out in the real world.

[stepback]

One question to ask is: Does the USPTO have substantive legislative powers such that they can arbitrarily and capriciously re-define what "any process" means under 35 USC 101? Did Congress abrogate its powers and hand them over to the USPTO? If so, where and when did this happen?

[pds]

Thanks MM ... for not answering any of the questions. Again, not remarkable as I have made the observation many times that you don't like to answer questions.

Instead, you are content to, yet again, change the subject and subject us to your wet dreams about the dissent in LabCorp v. Metabolite.

[Budge]

The Fed Case law is that (i) a general purpose computer can be programmed to not be 'general purpose'; (ii) when data is transformed, the computer that uses it is transformed, albeit on the micro-level of the cells.

What is issue here? Think Duffy is off 'kilter'

[AllSeeingEye]

I figured it wouldn't be long until the shrimp serving and car parking shift was over and we had to endure more taxi cab "wisdom" from Mooney.

"The answer to the question "why stop at calculations" is that "calculations" are merely symbolic embodiments of pre-existing mathematical relationships."

Tell that to Einstein. Better yet, tell that to Newton's Ghost...

Mooney, go back to the lake shore, your crack pipe is waiting.

[Malcolm Mooney]

"Thanks MM ... for not answering any of the questions."

Except I did answer your 7:41 question directly, pds. I am loathe to break the bad news to you. You asked another question about what the law required but it seemed like a rhetorical strawman and you proceeded to answer the question yourself. In any event, whether the law requires that the process be tied to a machine is irrelevant to the fact that the claim reads on a wholly mental process. That's bad claim drafting. More specifically, it's unpatentably broad claim drafting. You'll learn eventually, pds. Probably the hard way.

"I have made the observation many times that you don't like to answer questions."

And you were wrong every frigging time. Sorry, bud.

[AllSeeingEye]

Mooney, I've said it before and I'll say it again - you don't know what you're talking about.

[e6k]

"Does the USPTO have substantive legislative powers such that they can arbitrarily and capriciously re-define what "any process" means under 35 USC 101?"

It's not arbitrarily if the courts have done it for us already. You simply must remember the office isn't coming out of left field with this interpretation, the office is asking the court to get back to where it was 20? years ago and then further clarify.

[jsp]

"nothing more than a computer making calculations"

The novelty (whether patentable or not) in Page Rank is not just the set of calculations (which could be done by "monkeys") but the development of an algorithm for ranking pages that is actually useful. There is an unlimited variety of ways that could be used to rank the relevance of pages; in the years Before Google (BG) some of these were used apparently based on trial and error. The reason for Google's success was its ability to produce useful results rather than just an arbitrary set of pages that happen to contain your search terms.

Obviously an abstract algorithm (which is where the real smarts exists in most software patents) is even less patentable than a piece of software.

[Eric Wilson]

As a software inventor (not a patent attorney) I don't see how the Google patent can be used as the poster-child to support this argument. Couldn't Google claim:

A search result presentation system comprising:
one or more server computers running Pagerank engines;
at least one end user display displaying Pageranked results;
wherein each Pagerank engine... [does what it does].

Would that meet the proposed new criteria? (I'm genuinely asking.)

What the above Google example does clearly show me however, is how important software patents really are. If Pagerank was un-patentable, it could only be protected as a trade secret and run behind closed doors. This means the general developer community might never find out how Google works (including those open source developers who wish to have software patents abolished). This would have two immediate consequences:
1) Google might be loathed to allow its products to be run securely inside corporate networks for confidential corporate data (since this would lead to the reverse engineering of its would-be trade secrets).
2) Third-party developers may find Google's application programming interfaces harder to leverage even if they were offered under those circumstances, since Google would be loathed (even more) to explain how its services behave under different conditions.

In summary, the sky might not be falling in as the article suggests, but these issues need to be handled very carefully.

[Giri Pathmanaban]

To prove Eric's comments that the sky is not falling, the very same pagerank patent has device claims that requires a computer:
"19. A computer-readable medium that stores instructions executable by one or more processors to perform a method for scoring documents, comprising:

instructions for searching a plurality of documents, at least some of the documents being linked documents and at least some of the documents being linking documents, at least some of the linking documents also being linked documents, each of the linked documents being pointed to by a link in one or more of the linking documents;
instructions for scoring each of the linked documents based on scores for the one or more linking documents; and
instructions for providing the linked documents based on their scores."

I can't see any court invalidating that on the basis of 101. And most other software patents have atleast one independent claim that requires a physical medium. So, Prof. Duffy's concerns are an overreaction, in my book.

[Eurodisnae]

IF the USA really wants to clarify the scope of patentable subject matter and IF it wants to limit that scope along the lines of physical transformations etc., it could do worse than look at the EPO's established/evolving practice on "technical effect" - not perfect by any means, but certainly preferable to the semantic games and hopeless uncertainty that now seem endemic at the USPTO.

I would humbly suggest, also, that the USPTO should be cognizant of its obbligations under TRIPS to make patents available for any inventions, whether products or processes, in all fields of technology without discrimination, subject to the normal tests of novelty, inventiveness and industrial applicability.

PS I completely agree that what set Google apart from the competition at the outset was the quality of their search results. What might the reason be for that, other than superior TECHNOLOGY?

[MaxDrei]

Following up on Eurodisnae, my gut tells me that Stanford (Page and Brin) would have a valid patent in Europe. But their patent family on 6,285,999 contains only US members. So we will never know.

[Lowly]

"120. A method for improving refractive ophthalmic treatment comprising:
* obtaining a first, pre-operative diagnostic measurement of an individual cornea of an eye;
* determining a first operative corneal ablation specification based on the first, preoperative diagnostic measurement;
* obtaining non-tissue removing perturbation data from the individual cornea before ablation to obtain a biodynamic response data from that individual cornea;
* obtaining a second, post-perturbation, preoperative diagnostic measurement of the individual cornea;
* correlating said non-tissue removing perturbation data with the biodynamic response data gathered from a statistically significant number of corneas; and
* establishing an individual customized laser ablation specification for corneal ablation for that individual cornea, based at least in part on said biodynamic response data.

101 subject matter or not?"

Another poorly drafted claim. In the first claim and fourth features, rather than "obtaining" i'd have written "performing."

[Anon E. Mouse]

Giri,

You should see some of the rejections I get. Your claim would be rejected on 101 because it reads on a signal, which is nonstatutory. Yes, I cited Beauregard and quotes the claims from the patent. Rejection. People buy software over the innernets now, you know. Computer program products included downloads.

Yes, I tried the "how do you 'store' information on a signal?" argument. Rejection.

I tried "tangible computer readable storage medium." Rejection.

Now time for appeal. What a waste of time and money.

Of course a CPP has always read on a printed piece of paper even though we pretend it doesn't. There's is no difference between writing a bunch of hexadecimal on A4 paper and scanning it in or putting it in Braille or putting binary bumps on a CD ROM.

I wish people realized that the reasoning against patenting "software" extends to all subject matter. A general purpose computer *running* software is a particular apparatus, just as a snazzy new antilock braking system using brave new algorithms in an embedded controller is a particular apparatus.

[SF]

BHR wrote, "My view is that the idea of ranking pages using link data should not be patentable by itself (which would then cover every conceivable way of calculating page weights from the link data) but a particular way of doing so may be properly patentable."

Then invalidate it based on novelty, obviousness and/or enablement. Why must a court create a "gloss" on the meaning of "process" in section 101 so that it can be the gatekeeper? I think the "enabling the full scope of the claim" cases are adequate to address claims that go far beyond what the applications disclose. Hire a computer science expert who can show that the claims are not enabled. It shouldn't be that hard to do.

[ironicslip]

AP - "Maybe the PTO is finally implementing my test: If the claim is nothing more than a computer making calculations that, given enough monkeys and calculators, could be done manually, there is no patentable subject matter." right, and a patent agent is nothing more than a "computer" trying to get claims ... what value do YOU add? why not let your client give a whirl with the OFFICE? given enough claims and enough agents why do it manually at all ...

simply fire the patent agents &, by extension, if we want to continue to devalue the US Patent system keep the disclosure from public dissemination (they aren't written very well, they aren't novel. they aren't "part of our plan"), ... why bother if there is no there there? here is a previously referenced appln - call it patent agent replacement 20010049707

the real irony ... the "coalition for patent fairness" pushes and pushes and lobbies and lobbies for patent reform (the patent reform act of 2007 even carved out payments for datatreasury) & it comes in spades all over the map ... new rules on continuations & appeals & IDS & more boxes to check (thank you Exec Branch - err Admin Agency) ... lots of rulings from the SCOTUS (thank you Judiciary Branch) ... then ... Bilski (well, not such a dramatic event) ...

amicus briefs filed in Bilski take a decidedly different tone from the entrenched positions of the members of the coalition for patent fairness. Duffy included, btw. how could they believe that their own IP would be at risk, yet the "monkeys with computers" are STILL on the loose ... Duffy points out the obvious but forgets about the MSFT-Yahoo-Google dance currently in motion - what could be more tangible or ripe for DoJ interest - forget patents, right (btw, it is the Overture patent, US Pat 6,269,361, referenced here previously, that DID price at $1.63 bil - anyone posting here who is dismissive of *patent* value in Google's plans is out of touch, put mildly)

... perhaps Google's recent "Allied Security Trust" in view of Intellectual Ventures multi-billion dollar funds should be considered innovation or even RIM's massive purchases of patents in 2008 - $350 mil 1st quarter (?) (perhaps when their lobbying was deemed ineffective - thank you, Canadian brothers & sisters) ... what does it means to be tangible? (ability to pay mortgage?) a "useful art"? (only if we have shiny plastic boxes attached - for taxation purposes?) an "innovation"? (only if you bought one too - else it's a fad) >>> litigation is cheaper than R&D ...

SIDE NOTE :: Euro-whatever - people DO NOT BUY TECHNOLOGY THEY BUY PRODUCTS & SERVICES ... that the underlying page rank system is based on patentable subject matter EQUALLY MEANS THE US SHOULD ABANDON TRIPS & WTO in general in deference to protecting US Patents ... The facts can be used in reverse ... the US has suffered stagnating white collar income so why not reverse the bad harmonization decisions made over the past 15 years. Whatever is "endemic to the USPTO" - please show me a valuable EPO patent ... akin to the Overture patent cited above ... for reference purposes.

last, can some please explain what a software patent is? what is a business method patent? all patents are software & all patents are business methods (well if a patent can get the patent holder paid - *that* is a business) - ooh ooh - what is a "defensive patent" again?

[MaxDrei]

Mouse, depending who are your "people", do not despair. I think the entire patent community of Europe realises what you wish "people" would realise. But when 101 is as it is, and Congress is as it is, and the judiciary is as it is, and you are the USPTO "people", you do what you can to get by, don't you, and to keep the ship afloat? Maybe the PTO plan is: when we've done enough of our "reject, reject, reject" to succeed in damping the surge of doubtfully-technical apps to a more manageable steady flow, then (and only then) we can begin to ease open the tap. Everything comes to he who waits (perhaps).

[MaxDrei]

Slip, don't understand. Euro-whatever is saying that the Google contribution is new and non-obvious technology, so it's patentable subject matter in Europe. If "people" were to find that technology (signals, software products) which is the subject of their valid European patents is unpatentable in the USA, that would be unfortunate, no?

[Eurodisnae]

Ironicslip

Ironically, I’m not at all sure what point you’re trying to make.

Patents have never just been about things that people buy, but about the technology embodied in or associated with things that people buy, including the equipment, materials and processes used to make those things.

And people buy computer program products, whether such products are tangibly embodied on CD-ROMs and sold in physical 3D stores or whether they are downloaded over the net (I hear you can even do it wirelessly these days).

One of the interesting things about Google is that they don’t sell anything to anyone except people who are trying to sell other things to other people, and yet their business model depends crucially on their technology that serves the people they aren’t selling anything to.

TRIPS doesn’t preclude the patenting of anything at all. It insists that “novel, inventive, industrially applicable technology” should be patentable, allows members to prohibit patenting a very limited list of things if they wish, and positively doesn’t prohibit members from allowing the patenting of things beyond “novel, inventive, industrially applicable technology” – my point was that the apparent USPTO desire to limit patentability as discussed in the article actually seems preclude the patenting of some things that TRIPS insists should be patentable.

You don’t have to be European to think that USPTO policy/practice is a mess – just read this board. Where does Lundgren stand right now? Are we waiting for the Bilski judgement to answer that too?

A software patent is a patent that’s only about software innovation and a business method patent is a patent that’s only about business method innovation. They do exist, as do a variety of hybrids.

[big hairy rat]

"Then invalidate it based on novelty, obviousness and/or enablement. Why must a court create a "gloss" on the meaning of "process" in section 101 so that it can be the gatekeeper?"

I think that you are right at an intellectual level and I would agree with you if there were no costs associated with bad patents. I suspect that what is going on is that the PTO is saying that the software / business method patents that are coming in are so low quality that it is better from the point of view of encouraging innovation to simply disallow all software / business methods under 101 then to try to separate the wheat from the chaff using the other sections.

Changing metaphors: When you are mining thin ore, there comes a point where it becomes counterproductive even if there are a few nuggets of gold mixed in with all the dross.

[Danny Sullivan]

Even if the patent is invalidated, no big deal to Google. It's not like it has tried to enforce others from using it. Nor are they, at least entirely, since ranking algorithms are more like a recipe of many different techniques -- and PageRank is just one of them. Google has its own secret recipe that isn't patented but remains unique to Google.

[stepb back]

'''Another poorly drafted claim. In the first claim and fourth features, rather than "obtaining" I'd have written "performing." '''

Lowly,

Don't be so quick in your rush to judgment.
The fact that it is claim number 120 should give you a clue that perhaps there were 119 claims that preceded this one.

A good patent attorney (and BTW I have no association with the Ex parte Roberts people, just happened to spot their BPAI decision on a random look-see) would consider the ways in which an infringer might try to design around the invention.

So one of the ways is to split the infringing acts (divided infringement) where one party does the measuring and a second party does the using of the data obtained from the measurements. The second party is still exploiting the invention but trying to do so in a crafty way. Claim 120 was apparently written with an eye towards getting direct infringement by such a second party.

Don't be so quick to judge others.

[Malcolm Mooney]

stepback "The second party is still exploiting the invention but trying to do so in a crafty way. Claim 120 was apparently written with an eye towards getting direct infringement by such a second party."

But Lowly's (and others) point was that it is a poorly written claim, period, regardless of who the claim is "trying to capture." A claim on "using data", that reads on an entirely mental process? It's unpatentable.

[Malcolm Mooney]

Great comments by Danny Sullivan and big hairy rat who clearly get it. Not that difficult, really.

[stepback]

Mooney,

Your arguments about obtaining measurement data are vacuous at best if not downright unscientific.

The next time you have a personal health emergency and are laying on a gurney in the Emergency Room, tell the doctor not to bother with obtaining measurements via EKG, x-rays, etc, because the data obtained is merely mental steps and expensive, as well as time wasting. Let the doctor conjure up his own data using only his mental powers and come up with a quick diagnosis. A diagnosis after all is merely purely a mental step (as you and some others here see it) and therefore why waste time taking physical measurements?

As for myself, I prefer that the doctor obtain measurement data so that he can make a scientifically based diagnosis rather than one based entirely on witchcraft. And if my health bill includes royalties to an inventor who came up with a better medical procedure, so be it. That's the cost of progress (for those who do not want to engage in outright stealing from the work of others).

[mark]

The Google PageRank claim could have arguably included at least a "virtual" transformation of data (that ultimately appears as a physical transformation on a networked computer display), rather than simply calculating a "rank" (just a number), if it had recited obtaining a plurality of documents "in response to a search request from a network user", and "returning a linked list of the linked and linking documents to the network user in an order determined by said score such that said documents are accessible to the network user through said linked list". But the claim, as written, arguably covers only the mere calculation of a score, as described in the article, without actually defining the transformation that does occur in the invented method.

[Lowly]

"But Lowly's (and others) point was that it is a poorly written claim, period, regardless of who the claim is "trying to capture." A claim on "using data", that reads on an entirely mental process? It's unpatentable."

You are correct. I don't care how clever the idea behind the claim was, it was written in a way that opens the door to a 101 rejection from E6k. It should have been written differently.

[Malcolm Mooney]

stepback "A diagnosis after all is merely purely a mental step"

Indeed is is, in the simplest embodiment.

Unless a claimed method of diagnosis is limited by requiring a step of communicating, reporting (i.e.,to a patient or another physician) or recording the information, it is very likely an invalid claim. You are not allowed to claim facts and prevent a doctor from merely thinking about the facts, nor can you prevent a doctor from taking action on claimed mental steps that you "suppose" the doctor must have considered.

[TQ White II]

I'm not a lawyer but I am opposed to much of the current intellectual property regime. I've read this and agree with the USPTO. Pagerank is an idea, not an invention. It could have as easily said, "Method for assisting people to find good information." Doing a tally of incoming and outbound links is a good idea and Google does a good job of it. However, I don't understand how it benefits our society by preventing someone else from doing it better.

You want companies to prosper? Ok, then tell them to keep their secrets secret. There's nothing about Google that requires them to reveal their details. And, as we all know, they have not. Google is known to have adjusted Pagerank in many secret ways over the years.

Honestly, it seems to me that the laser eye treatment patent should be invalid, too. As far as shown in these comments, it only describes ideas. All the questions about how the measurements would be taken are legitimate. My recollection is that a patent was supposed to contain enough information to allow another practitioner to duplicate the process - the process that was prohibited by the patent.

Both Pagerank and the laser patents cover an infinitude of potential systems that fit the description. Neither contains enough information to duplicate any particular system (are the laser people patenting eye measurement with a cool laser system? Calipers on the eyeball? Estimation? All of them?).

The bargain, as I understand it, of the patent system, is that we will grant a monopoly in exchange for information to allow others to expand upon. Mere ideas are not sufficient for this purpose. I'm not smart enough to conceive Pagerank (even having heard that such a thing exists) but I might be smart enough to see a way to improve upon it, if I knew how it was done. But I can't, because its claims to cover the very idea of link-based relevance, the guy who is smart enough to figure out Pagerank the Sequel, is prevented from doing so.

And so I say again, how does our society benefit from this?

[bierbelly]

"In other words, the secret to Google's success isn't someone's obsession with a lightweight interface - it was their major leap forward in search result quality."

And that, plus $4.50 will get you a cup of latte. Where's the value?

[Malcolm Mooney]

TQ White, the reason those great inventors are entitled to those claims is because they were working in a complete vacuum. Prior to their inventions, there were no such things as search results or eye surgeries. Their contributions were so tremendous that the PTO, always thinking of the American public, thought it best to give them claims of gigantic scope -- a little extra bit of reward (and incentive for the next truly brilliant, society-changing invention that would never take place but for the brilliance of the inventors who deem us worthy of their creations).

/patent huffer off

[101_4Ever]

Malcom: The quid pro quo of the patent system allows a monopoly as a reward for innovation. The programmer who can build upon a patentable idea *can* once the idea is part of the public domain at the expiration of the patent term. If you don't grant software patents, where is the incentive for innovation?

Where is the incentive to transform hardware devices currently in use into software form? For example, musical synthesizers. If you can patent a hardware synthesizer, why can't you patent software that performs the same functions but on a computer?

[Malcolm Mooney]

"If you don't grant software patents, where is the incentive for innovation?"

Maybe there is some latent consumer demand for better software. You could tap that demand and fuel it with advertisements and free trial periods. Then you could charge the users for upgrades and add-ons once you got them addicted. Maybe you could make that stuff available by the web and reduce production and distribution costs to relatively nil compared to the old truck/gas/store model.

I dunno. Those are just some thoughts that popped into my head.

[Canivious]

I have a question - say that PageRank was never patented in the 1st place, because there was no such thing as patenting in the realm of software. But, the "guys" did come up with the idea - how could they just sell the idea to someone else, if they could not surrender the rights to the patent itself? In that case, they might have just given up and we would still be using alta vista (crap). I mean, this "idea" had a life - they had to put in a boatload of work between the original initial "thought" and the pseudo "design" which these patents seem to be - since you can just take it to a Cobol programmer (as in “unimaginative”) and they could make it work.

[Greg Lindahl]

Google's PageRank patent is one of many patents which takes a well-known process and moves it to a new area. Just as the concept of "hey, let's patent storing a wishlist in a database" isn't very innovative, the concept of PageRank is embodied in the citation counts used to evaluate professors up for tenure. "Citation clubs" are the way to beat that system, and indeed, "link exchange" is used to attack PageRank.

It's a shame that the patent system has been unable to stop such silly patents. Personally, I'd rather see no software patents than a flood of silly ones. That way we could all go back to innovating, and spend less time wading through a swamp of patents, and the trolls that love them.

[big hairy rat]

"If you don't grant software patents, where is the incentive for innovation?"

Gosh, back in the bad old days when I started computer programming (sometime between 1950 and 1981) when software patents were not being allowed there was no end of innovation. Innovations came as fast as the hardware permitted. I even remember one major design meeting in about 1976 for a project where we explicitly agreed to design the software for the hardware we expected to be available two years later - innovation was running ahead of the hardware. I expect that game programmers do the same today.

It appears to me that software patents have not added to the rate of software innovation since 1981 and if anything have slowed down the overall pace of innovation.

[big hairy rat]

"I have a question - say that PageRank was never patented in the 1st place, ... But, the "guys" did come up with the idea - how could they just sell the idea to someone else"

They would have done what they probably did anyway: develop a prototype working on a a subset of the Web as a computer science school project and demonstrated its effectiveness to venture capitalists. Instead of seeking a patent they would have relied on trade secrets - which they do to a significant extent anyway. Its not as though the computer science department at Stanford would have had much trouble getting the attention of venture capitalists.

[pds]

"Gosh, back in the bad old days when I started computer programming (sometime between 1950 and 1981) when software patents were not being allowed there was no end of innovation. Innovations came as fast as the hardware permitted. I even remember one major design meeting in about 1976 for a project where we explicitly agreed to design the software for the hardware we expected to be available two years later - innovation was running ahead of the hardware. I expect that game programmers do the same today."

Oh yes .... the roaring 50s, 60s, and 70s ... the pinnacle of software development. Since the early 80s, not much has change in software .... barely any innovation whatsoever.

"Instead of seeking a patent they would have relied on trade secrets - which they do to a significant extent anyway."
A trade secret??? Really??? Do you think computer-related inventions can be protected by trade secret???

Since you've owned up to be at least somewhat knowledable in the area, do you realize that very, very, very few companies are able to protect their computer related inventions by trade secret? Google can protect its server-side technology because it controls the server. However, Google cannot protect anything that gets distributed out. Most companies that try to make money on their computer-related inventions do so by selling the software and/or hardware associated with the software to clients. As such, once its in the client's hands, you might as well kiss the trade secret good bye.

Moreover, even if they are protected in-house, all it will take is just one person with a USB flash drive (or whatever small portable storage device you want to dream up) to steal the trade secrets and post them on the internet. In a couple of minutes, the trade secret goes "poof" and you are left nothing.

[curious]

very few inventions that are commercialized can be protected by trade secret protection

[Yet Another Anon]

PDS wrote: "all it will take is just one person with a USB flash drive (or whatever small portable storage device you want to dream up) to steal the trade secrets and post them on the internet. In a couple of minutes, the trade secret goes "poof" and you are left nothing."

Really? Is that an accurate statement of trade secret law?

For that matter, are you sure that Google's page rank algorithm isn't protected by trade secret as well? Is it possible that the patent protects the idea, but that the actual algorithm is protected by trade secret?

[court1]

With all due respect, the test you articulate is not the correct test.

You recite the test as "In the most recent of these three—the currently pending en banc Bilski appeal—the Office takes the position that process inventions generally are unpatentable unless they “result in a physical transformation of an article” or are “tied to a particular machine." Indeed, this may have been stated in oral argument, but the language is unfortunate.

The language paraphrases the test that is being applied. That test is "Transformation and reduction of an article to a different state or thing is the clue to the patentability of a process claim that does not include particular machines." Diehr, 450 US at 184, quoting Benson.

Thus, there is not a two part test here. There is only a one part test. Bifurcating the test leads to error.

The point of the unfortunate language is that the recitation in the preamble that the process is a method executed on a computer apparatus does not save the process, if the claim fails to meet the transformation test. The board held that a nominal recitation of a computer apparatus in an otherwise ineligible method fails to make the method a statutory process.

After the board states that the claimed method is not tied to a particular machine, but rather is tied only to a general purpose computer, the board states that claims that involve machines in a merely incidental fashion are not automatically directed to a patentable process.

That is the meaning of the unfortunate language, which you have interpreted as a separate leg of a two-part analysis.

The bottom line here is that a process to be statutory must perform a transformation and reduction of an article to a different state or thing. This test must be applied to the claims in question, especially if there is only an incidental recitation of a computer apparatus in the preamble.

[court1]

"Thus for both Langemyr and Google, patent eligibility under the PTO’s test comes down to the interpretation of the second part of the PTO’s test."

I think this statement is incorrect. There is no two-part test, so there is no second part.

[Tom S.]

Here's what's going on...in a NUTSHELL:

There is now raging a 30-year plus debate on whether "transformation of information" is patentable subject matter. Transformation of information is, of course, performed in the modern day by software. It can be performed by other means--including mental steps--however, advantageously sometimes necessarily, it is performed by software.

John Love, Deputy Commissioner for Patent Policy, who joined the office in 1969 to avoid the Vietnam draft, is a mechanical engineer who in his heart of hearts cannot fathom why software should be patentable. The "wacky" business method patents and even wackier methods in other arts just puts him over the edge. It's a wonder he's still sane? That's a question mark.

Should methods and systems for transformation of information be patentable? Why or why not? More importantly, who should decide?

Well, CONGRESS should decide. It is Congress that was given the power in the Constitution, Article I, Section 8, to Promote the Progress of Science and the Useful Arts, by securing for limited times... However, Congress won't decide, or can't, or shouldn't by reason of unintended consequences of laws enacted by the misinformed and misguided.

So where does that leave us?

Neither side will admit that the debate is really about whether patenting methods of transforming information is the issue, because, to the proponents, transformation of information still sounds unsubstantial ("it's just software"; "it's just data"), and because, to those opposed to software patenting, transformation of information is undisputably economically valuable as the driver of productivity in the 21st Century--by the tranformation of information we reduce, we optimize, we efficiently allocate resources (tangible, concrete resources mind you) to more economically productive outcomes.

Ask a 20-something if information is worth paying for (ask a Dad of 20-something who pays his or her cell phone bill). Ask a 40-something if transformation of information is economically valuable. Of course. Ask a 60-something the same question. Different answer. John Love is a 60-something. The BPAI is 60-something.

This author's opinion is that the present attack on patenting by the Office and by certain members of the BPAI is from a fundamental aversion to patenting methods of transforming information to useful ends (i.e. software); the belief that such transformation is not innovation and has no place in patenting, patenting having been reserved by our founders for those technologies which they could foresee in 1776, namely, mechanical and chemical patents (recall that electrical methods and means had not yet arrived); and as a political expedient to global harmonization of patent laws (note that Europe is moving TOWARD software patenting, not away).

A forthright debate on whether methods of transforming information in this Information Age "promotes the progress of science and the useful arts" would be the most direct approach. In the meantime, Congress has not enjoined patenting of novel and nonobvious methods of transforming information and the Supreme Court has concurred on Congress' right to "so order."

[Malcolm Mooney]

"John Love, Deputy Commissioner for Patent Policy, who joined the office in 1969 to avoid the Vietnam draft"

Great argument!!!

[curious]

John Love invented an improved pencil sharpener and received patent #542,419 on 7/9/1895

[pds]

"The bottom line here is that a process to be statutory must perform a transformation and reduction of an article to a different state or thing. This test must be applied to the claims in question, especially if there is only an incidental recitation of a computer apparatus in the preamble."

Apply that logic to the decision of AT&T v. Excel. What is the article being transformed?

[thinkfeeldo]

What get's me folks is this:

Inspiration does NOT form in a vacuum!

Why aren't the likes of Google et al paying royalties to the estate of Thomas Edison or for that matter any other holder of a patent which has made their own patents/ systems/ models/ methods possible?
I.e. No electricity = no power = no 'puter = no claims = no patents = no Google!

Like practically every other inventor before them, Page and Brin have borrowed from previous technological realities and developments or systems already in existence. All they've really done is applied their own inherent reasoning to the then current incarnation and tweaked it! Whoo! Hoo!

Why isn't it mandatory for inventors to make a royalty payment to the source of their inspiration? I.e. "I was watching a dolphin leap out of the water one day and...hey presto!"

For are we all not standing on the shoulders of giants before us?

P.S. I am currently working on a patent (system and method) which will enable me to charge a royalty for any new thought or action derived from any previous thought or action ;-)

TFD

[pds]

"Why aren't the likes of Google et al paying royalties to the estate of Thomas Edison or for that matter any other holder of a patent which has made their own patents/ systems/ models/ methods possible?"

Actually, this is a point lost on many patent-hat ers. Patents expire 20 years from issue. For example, every patent that was filed during the alleged "great patent rush" of the late 90s has already used up half of its life. In another ten years, all these patents that people are currently ringing their hands over are going to expire.

20 years is a blink of an eye ... particularly when you are trying to get a patent application through the USPTO.

[tiptoetiptoe]

Posted by: pds | Jul 22, 2008 at 08:58 PM

pds,

Your argument seems to be along the lines of "it's easier to use a patent to go after a copycat" rather than "patent is the right regime for protecting software." I agree, it's harder to prove someone stole and used your trade secret than it is to prove that someone infringed your patent. It's also harder to recover your damages. However, ease of enforcement / collection doesn't convince me that software should thus be patentable.

Patent explicitly does not protect some subject matter, those which are ineligible under 101, 102, 103, and 112 for example. I can understand those who argue that software should be excluded under 102/103, but I'm not completely convinced yet that they should make it through the door of 101.

From this thread, it appears that the main argument for patenting software is that because the same result can be coded for in many different ways, patent is necessary to protect the "idea" being coded so the inventor can recoup his investment and make a profit. First, this seems to me to run explicitly into the "ideas are not patentable" function of 101. Second, the economics of software appear to me to make the initial investment rather low, so that a profit is returned more quickly. At least, that's my impression compared to say, pharmaceuticals.

[MaxDrei]

Tiptoe: do you have any issue with the "big idea" in Europe, that patents are to be obtainable by the first inventor ( I write "inventor" deliberately, because that is, in its effect, what we have in Europe) to file an enabling disclosure of a new, useful and non-obvious solution to an objective technical problem, to secure 20 years of exclusive rights, with a scope of protection commensurate with the size of the new and non-obvious "contribution" to the technical field in which the patentable subject matter is located.

I had thought that such a definition of "What ought to be patentable" is not controversial, not even seriously disputable. And it covers software products too. But on this blog, anything's disputable. What do you think?

[pds]

"Your argument seems to be along the lines of 'it's easier to use a patent to go after a copycat' rather than 'patent is the right regime for protecting software.'"

My argument is both. Software is much more than just a bunch of code lumped together, just as the latest engine in a high-end Lexus is more than just a bunch of metal lumped together.

Software is more than just "an idea," it is an idea embodied in methodology combined with hardware that does something useful. Just like an automobile engine is an Otto cycle (i.e., a thermodynamic cycle) embodied in a methodology combined with hardware.

"Second, the economics of software appear to me to make the initial investment rather low, so that a profit is returned more quickly."
I'm guessing that you haven't tried to make money selling software? Come up with a piece of software and try to sell it. Moreover, try to sell it at the same time saying that it is freely copyable. My guess is that for the time you spent developing/coding/testing/marketing the software, you would have a greater return on your time spent by working at the local Burger King.

[bierbelly]

"Moreover, try to sell it at the same time saying that it is freely copyable."

Which begs the question: Isn't copyright the more appropriate forum for software protection?

I find it disingenuous that the software companies whined for so long about how the patent system took too long to examine and issue their patents; complaining that their business cycle time was so short, perhaps a max of 5 years, but now embrace a system that gives them protection for 20 years, ostensibly long past the date that their products have ceased to be viable. Does this engender innovation?

[thinkfeeldo]

You're all missing the point.

Most patents are derived from an observation of something already in existence. Very few are truly original. In the not too distant future we will come to acknowledge them as one of our greatest mistakes realising they have been largely responsible for slowing human progress.

TFD

[thinkfeeldo]

In his book, G-Forces - The 35 Global Forces Restructuring Our Future (Morrow Publishing 1989), Frank Feather offers a Chapter on Sharing Information and Technology with a subject headed: Copyright Law Becoming Obsolete.

In it he proposes: 'Individual intellectual property rights will become absurd once collective knowledge is shared in a single electronic global brain, accessible to all.'

He continues; 'To restrict access to information, then, is to restrict economic development for everyone. Ideas are only economically valuable once they are applied in economic activity, and their value can be increased only through their widespread diffusion.'

Mr Feather's next subject, titled 'Technology Transfer - Essential to Prosperity' offers another remarkable insight:

'Never before have ideas been made so subservient to the wishes of mercenary authors. These days you must buy ideas or do without them - unless you succumb to piracy and counterfeiting.' Later he produces this gem: 'The problem today is that world competition has become intensely threatening. The fear of this threat is impeding our collective progress.'

[MaxDrei]

Somebody's pulling my leg. "Single electronic global brain, accessible to all" You cannot be serious. And anyway, who wants to live in that world? I tell you what: I'm not holding my breath till that day.

Think..Do: may I commend to you the life of a European Patent Attorney whose daily work is oppositions at the EPO. One day I'm working for an inventor, say of a blockbuster pharmaceutical, who needs a patent to recoup his investment. The next, I'm working for a generics manufacturer, who is pointing out the iniquities of evergreening patents. I see their point. Both of them. As far as I am concerned, the modern European law of patents, with its fundamental statutory imperative of delivering "fair" protection for inventors yet "legal certainty" for those impeded by the patent rights of others, is the right model to foster innovation in technology, for the foreseeable future.

[pds]

Which begs the question: Isn't copyright the more appropriate forum for software protection?

Copright doesn't protect funtionality. Come on, we've gone over this dozens of times. Just like there are hundreds of different ways to manufacture an automobile engine (and yet still retain the same functionality of the engine), there are hundreds (that number could be off by several orders of magnitude) of different ways to create the same functionality of a particular type of software.

Copyright protection for software will only protect against really dumb copiers.

"I find it disingenuous that the software companies whined for so long about how the patent system took too long to examine and issue their patents; complaining that their business cycle time was so short, perhaps a max of 5 years, but now embrace a system that gives them protection for 20 years, ostensibly long past the date that their products have ceased to be viable. Does this engender innovation?"

Don't confuse products with the technology. They are NOT one and the same. The product may be obsolete, but the technology may not. As in ALL types of technologies, improvements may be made on the old technology that still fall within the scope of the old technology. As such, although the product that embodied the original technology may long be off the shelf, the technology may live on in future products.

[TQ White II]

Some of you actual patent experts out there...

Is it true that the idea of patents was to induce people to reveal their secrets so they could serve as inspiration to others? Is not one of the main notions that the patent is supposed to be able to replicate the patented device?

And if true, aren't these ideas contradicted by the broad and abstract claims made by the patents we have been talking about? Don't they support the court opinion that started this all when it said that saying 'any computer' (eyeball measuring device, etc) is too vague compared to some specifically configured production system?

[MaxDrei]

TQ: there is a recent US case called Liebel-Flarsheim, which caused a stir in its assertion that the inventor has to enable (in his app to the PTO) the whole scope of the area he embraces with his claim. But, in Europe, where patent practitioners and attorneys at law are two different professions, with a healthy mutual disprespect, that's long been a fundamental principle of patent law. Actually, I think it is too, in the USA, but you know how those lawyers can muddy the waters.