Guest Post by Martin Goetz
Back on November 30, 2009, Patently-O published my article “In Defense of Software Patents” in response to the editorial “Abandoning Software Patents” by Ciaran O’Riordan, Director of End Software Patents (posted on Patently-O on November 6, 2009) which had as its premise that software companies are trying to protect “software ideas”.
In this article I comment on the Bilski Opinion as well as give some concrete examples of software-only patents as well as hardware/software patents. Also, my previous article received hundreds of comments, many being negative, and part of this new post is in response to those negative comments.
Since the June 28th Supreme Court Bilski decision there have been many articles[1] on what the Opinion stated and inferred about the patentability of software.
The Opinion restated what previous Supreme Courts concluded: that laws of nature, physical phenomena, mathematics, mathematical formulas (by themselves), algorithms (by themselves), and abstract ideas (which would include software ideas) are not eligible for patent protection.
While the Bilski Opinion never directly questioned the patentability of software, the Justices wrote extensively about the meaning of Section 101, the meaning of the term “process” and why the test for patent eligibility should not exclusively be “the machine-or –transformation test”. Justice Kennedy, with the concurrence of all other Supreme Court members, wrote that the Information Age puts innovation in the hands of more people and raises new difficulties for the patent law (and the Patent Office) to determine who should or should not receive patent protection.[2]
My November 2009 Patently-O article “In Defense of Software Patents” produced hundreds of comments. Many wrote that they were against the patenting of software because software was an “algorithm” or “mathematics”. In that article my primary argument was that a computer software invention is as patentable as a computer hardware invention and the only difference is the mode of implementation. My thesis was that Software Product companies in the Software Industry are looking to patent a machine process and not a computer program, which is protected by the copyright law. I showed why software product companies can be viewed as high technology manufacturing entities and should be just as eligible for patent protection as computer hardware companies.
In this article I give examples of patents where the preferred implementation of an inventive machine process is in software (via a computer program[3]), hardware (via circuitry), or a combination of both software and hardware.
There is little argument that “processes” and “machine processes” are patentable subject matter[4] The question has always been about the nature of software and what one is trying to patent. For over 40 years I have been involved in that argument since I received the first software patent in 1968 for an innovative way to sort large amounts data on a computer that had tape drives that could only read and write data in a forward direction (See Patent # 3,380,029, Sorting System, Issued April 23, 1968).
The Sorting System patent was dubbed a software patent but it could also have been a computer hardware patent. It was dubbed a software patent solely because the preferred implementation (the disclosure) was a logic chart (which is recognized by the patent office as a proper disclosure). My Sorting System patent would not have been controversial if the disclosure had been hardware circuitry since there were many hardware patents for sorting data on special-purpose computers and special apparatus. In my patent application I referenced six of those patents which all had unique hardware circuitry in their patent disclosure. Three of them are available online, courtesy of Google Patent Search[5].
From 1968 through 1980 my previous company, Applied Data Research filed Amicus briefs in the Prater & Wei, Benson, Johnson, Flook, and Diehr cases in which we argued that a machine process patentable in hardware is equally patentable in software. Here is exactly how we posed a “Question of Law” “in our 1980 Diehr brief:
Whether a computerized machine or industrial process that is patentable subject matter under 35 USC 101 when constructed with a hardware program (wired circuits) would also be patentable subject matter when constructed with a stored computer program (i.e., firmware or software)?
The USPTO is currently in agreement with that “Question of Law” when in 1996 it published its Examination Guidelines for Computer-Related Inventions (Final Version). The Guidelines stated in its Introduction the following: “The Guidelines alter the procedure office personnel will follow when examining applications drawn to computer-related inventions and are equally applicable to claimed inventions implemented in hardware or software.”
In that 1980 Diehr brief we also posed the following argument to the Supreme Court:
An inventor demonstrates his new invention to his patent attorney with great pride; he has developed a cabinet for reading books out loud to the blind. The cabinet contains both a reading and talking computer. After the demonstration, the patent attorney responds:
What's inside the cabinet? Did you build it with software or hardware (a stored program or hardware circuitry)? If built with a hardware program, your machine would be patentable. But if you built it with a stored program, the Patent Office would say it was merely mathematics and, therefore, unpatentable.”
The example above of a hypothetical “cabinet for the blind” invention was back in 1980 in our Diehr Amicus brief.
Twenty years later, in 2000, a renowned inventor, Ray Kurzweil received a patent named Reading System which Reads Aloud From An Image Representation Of A Document. The patent disclosure shows a diagram of a monitor, scanner, speakers, and a PC computer composed of a processor, storage and a keyboard. The essence of the disclosure and the invention is a logic chart describing a machine system which interacts with a speech synchronizer and the various devices.
The first sentence of the abstract in the patent stated “a reading system includes a computer and a mass storage device including software comprising instructions for causing a computer to accept an image file generated from optically scanning an image of a document.”
At that time, Ray Kurzweil’s company, Kurzweil Educational Systems marketed a special purpose hardware/software system called the Kurzweil 3000 Reading Machine which was marketed to the blind and poor readers. Their 2000 year patent protected this product from imitators. Today the company sells a software only system called Kurzweil 3000 and continues to have the protection of the patent system thru his original 2000 patent and with additional patents e.g., Reducing processing latency in optical character recognition for portable reading machine (which is a software-only patent).
Few would argue that the Kurzweil 3000 Reading Machine was not an invention and not deserving of a patent.
While I am a strong advocate for software-related patents I have always been opposed to the patenting of Business Method Patents (BMPs). In my 2006 article Patents: Where's the Invention? I stated that the Patent Office should do what the European Patent Convention did when it ruled that anything that consists of "schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers" is not an invention and therefore not patentable.” Justice Stevens, in his Opinion[6] also wanted to ban BMP’s from being patentable subject matter when he concluded that a method of doing business is not a “process” under 101.
Although the Bilski Opinion disallowed the Bilski application they stated that under certain conditions business methods could still be patentable subject matter. On July 27th the USPTO set up more stringent rules for the issuance of BMPs in their Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos. In many ways those guidelines are similar to the way computer software and hardware patents are currently being treated under the 1996 Guidelines for Computer-Related Inventions.
One of the greatest challenges facing the Patent office today for BMPs, software or hardware patent applications is in discovering prior art and determining if there is an invention. The USPTO “Peer to Patent” pilot project” which allows the public (including professionals in their respective fields) to comment on patent applications is still in its infancy, but offers the potential to assist the Patent Office in rejecting the large number of applications that are filed each year. The stated goal of the pilot project was to “connect the USPTO to an open network of experts online.” Also, private companies e.g., the Article One Partners, a patent research firm, have the potential to significantly reduce the large number of patent litigation cases.
In conclusion, while I am a strong proponent of software patents I am very aware, and agree with, many of the arguments against patents because of patent trolls, frivolous patents, e.g. Amazon’s one-click patent, and frivolous patent litigation that can put companies out of business. And I support changes in the Patent Law to reduce those problems. But if one believes in the how the Patent System has fostered innovation and helped the US grow and prosper, then there is no rational reason to eliminate technology inventions that use software as its implementation.
In my previous article there were many comments from die-hards that continued to believe that software companies are trying to patent a computer program, Whether those die-hards still believe that a computer program is mathematics, or a mathematical formula, or an algorithm, or an abstract idea, so be it. Computer software programs are not what software companies are trying to patent. A software patent invention is on a unique machine process —- nothing more and nothing less. And the criteria should be 1. Innovation 2. A proper disclosure and 3. Usefulness — the same requirement that is the criteria for all patentable subject matter.
[1] Click below for a sample of many of these articles. Reading the Bilski Tea Leaves For What The Supreme Court Thinks Of Software Patents Comments on Bilski and Software Patents; Here's Bilski: It's Affirmed, But . . .No Decision on Software Patentability; Supreme Court Decision Raises Software Patent Questions; Supreme Court 'Bilski' ruling doesn't rule out software, business-method patents; Software patent debate rages on; Software, pharmaceutical, and business method patents survive
[2](Underlining and bold added) (pages 9 & 10) “The machine-or-transformation test may well provide a sufficient basis for evaluating processes similar to those in the Industrial Age—for example, inventions grounded in a physical or other tangible form. But there are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age. As numerous amicus briefs argue, the machine-or-transformation test would create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals. See, e.g., Brief for Business Software Alliance 24– 25; Brief for Biotechnology Industry Organization et al. 14–27; Brief for Boston Patent Law Association 8–15; Brief for Houston Intellectual Property Law Association 17–22; Brief for Dolby Labs., Inc., et al.”
The Opinion went on to state:
It is important to emphasize that the Court today is not commenting on the patentability of any particular invention, let alone holding that any of the above-mentioned technologies from the Information Age should or should not receive patent protection. This Age puts the possibility of innovation in the hands of more people and raises new difficulties for the patent law. With ever more people trying to innovate and thus seeking patent protections for their inventions, the patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles. Nothing in this opinion should be read to take a position on where that balance ought to be struck.
[3] While the implementation is in a computer program, the disclosure for one skilled in the art, are thru flow charts (also called logic charts) and thru block diagrams.
[4]. The Bilski Opinion closely examined the meaning and the words of 35 U.S.C 101. From 35 U.S.C. 101: Inventions patentable: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent there for, subject to the conditions and requirements of this title.
[5] The Sorting Patents below were described thru and/or gates, and as methods and apparatus for sorting data. Sorting Device, Fillebrown, 5/1961 #2,985,864; Sorting Apparatus, Guerber, 5/1960 #2,935,732; Apparatus for sorting of Recorded Digital data, Dirks 3/1966 #3,242,466.
[6] (page 15) Because the text of §101 does not on its face convey the scope of patentable processes, it is necessary, in my view, to review the history of our patent law in some detail. This approach yields a much more straightforward answer to this case than the Court’s. As I read the history, it strongly supports the conclusion that a method of doing business is not a “process” under §101.
6: “Indeed, what of it?”
6, you said it:
“There is a distinction between the method and the “most practical way of commercializing and disseminating the method” that is quite important. Fundamental even.”
“There is also a fundamental difference between a method and an apparatus purpose-built to carry out the method,”
Indeed, what of it?
“If the apparatus can be protected, why not a medium holding executable logic for converting a general purpose apparatus into that purpose-built apparatus?”
Several people just got through telling you the reasons. I’m not going to rehash them. Read the thread. I only jumped in because you were spouting the usual party line. Now that you’ve gotten so far as to diverge from it, you can make it the rest of the way by reading the thread I think.
District Courts are overturned all the time. Cybesource has as much precedential value as a BPAI case or the blatherings of an Examiner such as yourself.
Posted by: Malcolm Mooney | Sep 16, 2010 at 06:23 PM
Namestealer.
It’s just like old times around here. First Socky the Sockpuppet with his magical Bernhart crxp, and now this. What next?
a medium holding executable logic for converting a general purpose apparatus into that purpose-built apparatus
This is a composition claim that describes no structure whatsoever to distinguish it from the prior art compositions. Reams of recent, well-reasoned case law making it perfectly clear that this is not allowed under 112. Case law that the PTO and the Federal Circuit cite all the time.
Except when the PTO sticks its head in the sand and bends over for software applicants.
MM: “Yes, you meant “I want a pony.””
6: “There is a distinction between the method and the “most practical way of commercializing and disseminating the method” that is quite important. Fundamental even.”
There is also a fundamental difference between a method and an apparatus purpose-built to carry out the method, but both can be protected. If the apparatus can be protected, why not a medium holding executable logic for converting a general purpose apparatus into that purpose-built apparatus?
“District Courts are overturned all the time. Cybesource has as much precedential value as a BPAI case or the blatherings of an Examiner such as yourself.”
No kidding? I’m just waiting to see how this one goes down ;) Either way, PMD applied or not, his 101 findings are unlikely to be naysayed.
“6, to clarify, when I said “yes please” I meant for new, inventive methods, not for methods that are already known. Big difference there. The latter case is a typical strawman I see used in the anti “software patent” movement.”
Of course you did and I understood that. I did not erect a strawman relating to them being old methods. What I said still applies.
MM, let me take you by the hand and make your small mind comprehend my point. Please change to: “I’d want to protect the method including covering the most practical way of commercializing and disseminating the method. Hence the Beauregard claim.
There, does that solve the riddle of what I meant for you?
Yes, you meant “I want a pony.”
6 MM do you happen to have that case faved?
I was thinking of Cybersource which is the case you linked to (and Cy Nical flagged upthread).
6, to clarify, when I said “yes please” I meant for new, inventive methods, not for methods that are already known. Big difference there. The latter case is a typical strawman I see used in the anti “software patent” movement.
Here’s the most recent beatdown of a Beauregard, which happened to use 101 ala Bilski:
link to 271patent.blogspot.com
Actually that might be the case I was thinking about, but I’m not 100% sure. Seemed like there was a case that just had a motion decided or something where the girl judge spoke at length about beauregards but didn’t fully hold on the case yet.
“Can I take those pieces of paper, stick them into a machine, and have the machine carry out the industrial method? If so, yes please.”
Of course you could. And of course you would want them. Like I said though, we do not permit such claiming practices here under our lawls. I look forward to what that DC judge has to say about that case. If it doesn’t get loled out of court before she gets the chance to rule.
MM do you happen to have that case faved? I don’t want to have to look back, but I do want to check on the progress thereof.
“And you too, 6?”
It solves the riddle of what you meant, but it doesn’t solve the riddle of why you think that such claiming practices are permitted here in the good ol’ US of A under our lawls. And as a recent DC judge pointed out for you, there is no reason to believe that it is.
6: “So, would you also like to patent pieces of paper with instructions thereon for performing all the rest of the methods in the various industrial manufacturing method claims already being claimed in our patent system?”
Can I take those pieces of paper, stick them into a machine, and have the machine carry out the industrial method? If so, yes please.
“I’d want to protect the method including covering the most practical way of commercializing and disseminating the method.”
So, would you also like to patent pieces of paper with instructions thereon for performing all the rest of the methods in the various industrial manufacturing method claims already being claimed in our patent system?
Sure you would. But we don’t let you. There is a distinction between the method and the “most practical way of commercializing and disseminating the method” that is quite important. Fundamental even.
That is MM’s point. Which happens to be my point from a long time ago.
IANAE: “If you want to argue that “computer-readable” doesn’t include things that can obviously be read by computers, you’ll have an uphill battle. And then another one, as you scramble to establish where the exceptions end and your claim can finally score you some damages.”
I take your point, and I agree that it is not a bright line solution, but at the end of the day there will always be need for reasonable interpretation. I simply think your scenario is not a reasonable interpretation of a Beauregard claim.
MM: “This doesn’t make sense”
MM, let me take you by the hand and make your small mind comprehend my point. Please change to: “I’d want to protect the method including covering the most practical way of commercializing and disseminating the method. Hence the Beauregard claim.
There, does that solve the riddle of what I meant for you? And you too, 6?
h Now, in the real world, if I want to protect an inventive computer-implemented method, I’d want to protect the method, not a specific implementation of the method. Hence the Beauregard claim.
Again, this doesn’t make sense, h. It’s not us.
It’s you.
MM: In the “real world”, Beauregard claims are composition claims so you lost me here.
More playing dumb… or, if you can’t parse through the “gotcha” to see what I meant than maybe you just are dumb…
“I’m pretty sure that the “PTO itself” cannot dictate what is and what is not controlling law.”
Well idk about the PTO itself, but I dictate it all the time. I happen to be right, but that’s another matter entirely.
“My point is that the computer readable medium and the circuit board achieve the same result.”
Which is relevant how?
“I said nothing about how the two might be claimed.”
So you said nothing about the important part? Good for you.
“Now, in the real world, if I want to protect an inventive computer-implemented method, I’d want to protect the method, not a specific implementation of the method. ”
You might.
” Hence the Beauregard claim.”
So, since you want to protect the method you claimed a product? Gj dorko.
” With respect to your issue about the claim catching a piece of paper that is never intended (although is “cap-able” of being) read and executed by a computer, again please step into the real world where such an interpretation would be laughed out of any courtroom you care to name.”
We’ve already seen what happened to Beauregard claims the last time they were in a DC (at least as reported on this site), the judge dam near laughed it out of court.
Let’s bottom line all this, you like to spout irrelevant nonsense as a red-herring. You want to protect a method so you claim a product. You draft the claims in a format that dam near gets laughed out of court (and soon probably will be, we need to keep up with that case). Anything else important I missed?
Now let’s play “who am I” based on the foregoing points. I’d guess you were NWPA. Or possibly Martin.
h: “Writing some code on a piece of paper is a different thing than manufacturing and selling computer software.”
Writing some code on a piece of paper is exactly what punch cards and UPC codes are. If you want to argue that punch cards are not computer-readable media, be my guest, but good luck suing anybody over a floppy if you “win” that claim construction point.
h: “That has nothing to do with my point.”
It’s exactly your point. Your point was that they should be treated the same. Well, if you can’t write a Beauregard claim to the equivalent purpose-built circuit, you shouldn’t get one to the equivalent software either.
h: “I said nothing about how the two might be claimed.”
Then what did you mean when you said you “don’t see why” they “should be treated differently”
h: “Now, in the real world, if I want to protect an inventive computer-implemented method, I’d want to protect the method, not a specific implementation of the method. Hence the Beauregard claim.”
Except that the Beauregard claim doesn’t protect the method. A method claim is what protects a method. Beauregard claims cling to life as computer-readable media (articles of manufacture) that have something special about them. They can’t possibly be methods, because they are infringed without actually doing anything more than creating the media.
h: “With respect to your issue about the claim catching a piece of paper that is never intended (although is “cap-able” of being) read and executed by a computer, again please step into the real world where such an interpretation would be laughed out of any courtroom you care to name.”
Computers read all kinds of media, and Beauregard claims are intended by the applicant to encompass any and all of those media. You said so yourself – you don’t want to limit your claim to any specific implementation. Well, computers read text on paper. They read holes in paper. They read x-rays. They read birds, even. If you want to argue that “computer-readable” doesn’t include things that can obviously be read by computers, you’ll have an uphill battle. And then another one, as you scramble to establish where the exceptions end and your claim can finally score you some damages.
IANAE: I’ve shifted my argument by the part you added in square brackets that I never said?
You didn’t say it, but your subsequent comments changed the fact scenario to exactly that – don’t play dumb.
And now there’s an intent element to the infringement? Really? Doesn’t sound like something I’d say.
Again you’re playing dumb. The point is, the Beauregard claim will not reasonably be interpreted to catch the ridiculous scenario you describe. Writing some code on a piece of paper is a different thing than manufacturing and selling computer software. Real world…
As an aside, intent can have a place in infringement analysis, e.g. 35 U.S.C. 271(f).
h Now, in the real world, if I want to protect an inventive computer-implemented method, I’d want to protect the method, not a specific implementation of the method. Hence the Beauregard claim.
In the “real world”, Beauregard claims are composition claims so you lost me here.
It’s not just that the PTO and the Federal Circuit doesn’t recognize the legal underpinning of Lowry.
With the exception of the Beauregard decision, both the PTO and the Federal Circuit consistently rebut and deny the legal underpinning Lowry (i.e., the Bernhart case which holds that “if the composition is changed, that’s enough to grant a composition claim even where the changed structure is ‘invisible’ and no structural limitations are recited in the claim”), albeit without disparaging the cases themselves.
But maybe it’s just because these stinky cases have not been put underneath the PTO’s nose in the proper context. I urge my fellow practitioners in the grown-up art units to put an end to this oversight.
And how exactly would you draft a valid Beauregard claim to such a circuit board?
I’m pretty sure that the “PTO itself” cannot dictate what is and what is not controlling law.
Well, no, but if the PTO doesn’t even recognize the legal underpinning of Lowry, that doesn’t say much for what the PTO thinks of the merits of Beauregard.
“The fact is that Lowry rests entirely on Bernhart which the PTO itself does not acknowledge as controlling law.
Got anything else, WID?
Posted by: Malcolm Mooney | Sep 16, 2010 at 03:16 PM ”
I’m pretty sure that the “PTO itself” cannot dictate what is and what is not controlling law. Yes, it likes to delude itself that it has such powers. Even venturing forth every now and then into the courts to get smacked down. We all need a Tafas now and then to remember actual law, don’t we?
Posted by: Ned Heller | Sep 16, 2010 at 12:28 PM
_____________
Ned: Question: was the Bilski claim held “abstract” only because it was not claimed as a machine or art article manufacture?
AI: No.
Ned: I think that was the position of the patent office and of many of the amicus briefs.
AI: Who cares what their position was. They are the losers.
Ned:The Supreme Court reasoning is unclear.
AI: The Supreme Court’s reasoning is crystal clear. Here read it for yourself,
“ Petitioners seek to patent both the concept of hedging risk and the application of that concept to energy markets. Under Benson, Flook, and Diehr, how-ever, these are not patentable processes but attempts to patent ab-
stract ideas.” /media/docs/2010/09/08-964.pdf
Ned, what’s so difficult to understand about that?
According to the Supreme Court, if you attempt to patent a concept and the application of the concept, your process will be considered by the Court to be an abstract idea. There is nothing esle left to ponder.
The only folks having a hard time understanding this are those with anti patent agendas that just can’t accept the fact they lost at the Supreme Court.
Now please all you anti patent folks repeat after me.
There is no machine requirement.
There is no transformation requirement.
There is no so called business method exclusion.
There is no business method category at all.
There is only concept and application of processes AKA DCAT. Apply your process, and only your process and you get your patent, slam dunk.
And that my friends is the law of the land.
CASE CLOSED!
purpose-built circuit board
Can you patent a new purpose-built circuit board without making *any* structural distinctions between it and the prior art circuit board?
Under the “logic” of Bernhart and Lowry, you certainly could. The question is why doesn’t the “logic” of those cases apply to the earnest applicants in other fields who would love to be able to use the same shortcuts available to Beauregard claim filers.
“whose sole purpose is to”
That’s very specific. It should really be explicitly recited in the claim.
Most people don’t want to narrow their claims to media whose sole purpose is to perform one function. That would rule out media that have other purposes, for example as mirrors or drink coasters or scrap paper or audio cassettes. Or landfill, while we’re at it.
I don’t see why a computer readable medium holding s/w instructions for causing a general purpose machine to carry out an inventive method should be treated any differently than a purpose-built circuit board that can generate the same result.
And how exactly would you draft a valid Beauregard claim to such a circuit board?
IANAE, I just read your 3:57PM post. This is how you’ve shifted your original statement:
I’ve shifted my argument by the part you added in square brackets that I never said?
And now there’s an intent element to the infringement? Really? Doesn’t sound like something I’d say.
Readable means able to be read. Not actually read or intended to be read. Just like every other word ending in -able, some of which we make up just for that claim. If it means something more specific, you’ll have to specify (probably in the claim but at least in the spec) what exactly you mean by “computer-readable” in that particular case.
In my last post, change “is meant to” to “whose sole purpose is to”.
IANAE, I just read your 3:57PM post. This is how you’ve shifted your original statement:
You know, the ones that are infringed by a piece of paper with a program written on it [that can, and indeed is meant to ultimately be, read and executed by a computer], even though the piece of paper is never actually read by a computer and the process is never actually carried out.
Malcolm, IANAE, I don’t see why a computer readable medium holding s/w instructions for causing a general purpose machine to carry out an inventive method should be treated any differently than a purpose-built circuit board that can generate the same result.
you’ve shifted the conversation.
Shifted how? We’re talking about computer-readable media, and surely a piece of paper is an example of computer-readable media.
And why should anyone have to carry out the process? After all, a Beauregard claim is supposedly statutory as a manufacture (the medium), not a process, and you want to sue the software company who doesn’t run the program as a direct infringer, and claim even unsold units and units you can’t prove were opened by the buyer as infringements.
So where exactly has the conversation shifted to?
Bar code. Now that’s SWEEEEET!
IANAE: It means any medium at all that can be read by a computer, without exception. That’s the whole point, right?
IANAE, I repeat my comment to Malcolm, you’ve shifted the conversation. I repeat your original statement:
The problem is with software patents that claim instructions for doing things. You know, the ones that are infringed by a piece of paper with a program written on it, even though the piece of paper is never actually read by a computer and the process is never actually carried out.
a skilled person will understand what “computer-readable media” means.
It means any medium at all that can be read by a computer, without exception. That’s the whole point, right? You want to claim the instructions for the computer no matter what existing or later-invented medium they’re on.
Well, what of my hypothetical computer that reads the Magna Carta and interprets it as instructions to execute a patented method because of how the computer is programmed? What of my hypothetical computer that reads an .exe file and interprets it as instructions to execute a patented method because of how the computer is programmed? Presumably neither of those is a general purpose computer, and presumably the .exe file would not run on a general purpose computer, so presumably Beauregard claims are never infringed in practice.
Or should I burn my copy of the Magna Carta before I get sued?
Malcolm Mooney: You’ve heard of bar codes?
Malcolm, you’ve now changed the context, refer back to IANAE’s comment and try again.
.
h Malcolm, a skilled person will understand what “computer-readable media” means.
Yes, it will mean precisely what the spec says it means, which is typically any media that is readable by a computer. That includes paper. You’ve heard of bar codes?
The question at hand is what does the Federal Circuit think of Lowry,
That’s a pretty good question, but I think Lowry is actually properly decided. It just doesn’t apply to Beauregard claims.
No — you are wrong. Lowry dealt with “printed matter,”
Lowry dealt with printed matter by saying that the doctrine didn’t apply on. the. facts. because there was a functional relationship with the substrate in the particular invention that Lowry claimed. In Beauregard there wasn’t one. It’s the exact same printed matter doctrine that applies to non-computer printed matter.
and of the few words in the Beauregard remand that actually discussed the law also mentioned “printed matter” and how printed matter doesn’t apply to these types of claims.
You’ve got to be kidding me. I can understand if you didn’t read Lowry. Lowry is long. But how could you have not read Beauregard? Beauregard is like half a page. What does Beauregard say about the printed matter doctrine? Only that the Commissioner admits it does not apply, and therefore the court lacks jurisdiction to decide otherwise. Hardly a ringing endorsement.
IANAE, I’m not aware of anyone ever arguing that such a claim is okay.
You are, actually. Unless you think it makes a difference whether the computer-readable piece of paper is made of wood pulp or silicon.
Malcolm Mooney: There are plenty of claims that recite “computer-readable media” where the spec defines the term in a broad, essentially circular manner. Probably true of most Beauregard claims, in fact.
Malcolm, a skilled person will understand what “computer-readable media” means.
.
Anyway, I’ve said my piece about Lowry and Beauregard.
And thus the shoelaces on the track shoes were tied. Don’t run too far. And be sure to come back when you think up another stupe name for yourself.
Sorry MM, as a matter of expediency, I skip over most of what you write. I also do the same with 6 and Max Drei.
Okay, Socky. Keep your head in the sand and keep filing those Beauregard claims for your stoopit clients.
h IANAE, I’m not aware of anyone ever arguing that such a claim is okay.
There are plenty of claims that recite “computer-readable media” where the spec defines the term in a broad, essentially circular manner. Probably true of most Beauregard claims, in fact.
Sorry MM, as a matter of expediency, I skip over most of what you write. I also do the same with 6 and Max Drei.
Its like when you are out at the bar-hopping late at night and some homeless person across the street starts some rant, you just tune them out.
Anyway, I’ve said my piece about Lowry and Beauregard. When the Federal Circuit disavows them, come knock on my door, until then, I’m just going to keep following the law.
WID The question at hand is what does the Federal Circuit think of Lowry, and by extension Bernhart. I haven’t seen any Federal Circuit cases beat up on either, so until then, I’m just going to follow the law.
That’s right. Be a good little patent agent and do what the associate tells you.
IANAE: The problem is with software patents that claim instructions for doing things. You know, the ones that are infringed by a piece of paper with a program written on it, even though the piece of paper is never actually read by a computer and the process is never actually carried out.
IANAE, I’m not aware of anyone ever arguing that such a claim is okay. Let’s not be building straw-men now.
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“I said the evidence is consistent with multiple alternative conclusions including yours. Because there’s basically no evidence other than the end result.”
No — you are wrong. Lowry dealt with “printed matter,” and of the few words in the Beauregard remand
link to openjurist.org
that actually discussed the law also mentioned “printed matter” and how printed matter doesn’t apply to these types of claims.
Awfully large coincidence that Lowry, which also dealt with “printed matter” came out 9 months before the Beauregard remand.
Regardless, I’m pretty comfortable with my interpretation of the events.
You’ve shown time and time again that you are ignorant of the underlying technology.
And you’ve shown just now that you’re confused or dishonest. I understand the technology of programming computers and saving the programs to computer-readable media perfectly fine. You’re welcome to sxck it.
Your comments at 3:09PM do not cite any case law or make any cognizent policy argument.
The “cognizent” policy argument is that your position about the justification for Beauregard claims is not compelling because it requires the PTO to have a policy of applying the law in a discriminatory manner, specifically to extend life support to software applicants that is denied to applicants in other art units.
I cited the relevant case law upthread when I explained why the CCPA’s “analysis” of the facts in Lowry and Bernhart is ridiculous, self-serving and completely out of sync with contemporary case law.
“The fact is that Lowry rests entirely on Bernhart which the PTO itself does not acknowledge as controlling law.”
The question at hand is what does the Federal Circuit think of Lowry, and by extension Bernhart. I haven’t seen any Federal Circuit cases beat up on either, so until then, I’m just going to follow the law.
Anyway, the fact that something wasn’t patented at one time does not mean that it would not be patentable subject matter today. Nice try though ….
Anyway, the fact that something wasn’t challenged at one time does not mean that it would be patentable today. Nice try though ….
Keep forgetting (or wishfully ignoring) that Lowry disposed of the printed matter doctrine?
Didn’t I address that one already? Go read Lowry. It has facts. One of those facts was a functional relationship between the printed matter and the substrate memory. Which distinguishes Lowry from actual Beauregard claims, where the only functional relationship is with something other than the substrate.
Regardless, now that OCR exists, conventional unpatentable printed matter is now also computer-readable printed matter. Even if Lowry did say what you claim, wouldn’t it be time to revisit that based on the glaring contradiction that “in a computer” makes the unpatentable patentable when “in a computer” is somewhere between obvious and completely trivial?
“Where are all the patents on piano rolls that differ from prior art piano rolls only by the ‘encoded’ songs?”
A lot of things that could be patented were not — they must have had a bad patent attorney tell them it wasn’t patentable. Anyway, the fact that something wasn’t patented at one time does not mean that it would not be patentable subject matter today. Nice try though ….
“Obviously. But a computer program written on a piece of paper that a computer can read is printed matter with no functional relationship to that paper.”
Keep forgetting (or wishfully ignoring) that Lowry disposed of the printed matter doctrine?
MM … that movie would be Star Wars because we already know that flashing a laser beam across the floor (or the screen) to exercise a cat is patentable. Of course, that would Star Wars IV and V because VI and I-III would bore the cat to tears.
Regardless, I prefer arguing with IANAE, at least he attempts to make sense. Your comments at 3:09PM do not cite any case law or make any cognizent policy argument. Frankly, I’m not surprised. You’ve shown time and time again that you are ignorant of the underlying technology. It is a waste of time doing anything more on this blog than poke a stick in your eye on occassion and see the hornets come buzzing out. Amusing for a few minutes, but not particularly satisfying over the long run.
Seems like WID has the track shoes on. Keeps repeating his/herself but refuses to address the points raised in the comments.
Somebody tell ping.
What evidence is that? You haven’t provided any evidence — just speculation.
Right, same as you. Equally plausible explanations, I said. I even came up with alternative reasons why the PTO might have dropped the Beauregard case as a result of Lowry, which would not have implied that Lowry applies to Beauregard.
You know that boilerplate you put into OA responses when you say that you’re canceling claims that the examiner has rejected but you’re doing it to expedite prosecution or save the client money, but you don’t thereby admit the claims are invalid? Plausible like that.
The only real evidence we have is the fact that the PTO dropped the case.
If you want to find some inconsistency between the evidence and my conclusion, go right ahead
I didn’t say the evidence is inconsistent with your conclusion. I said the evidence is consistent with multiple alternative conclusions including yours. Because there’s basically no evidence other than the end result.
WID the facts are that Lowry trounced the printed matter doctrine in a computer-realted field just 9 months before Beauregard came out
The fact is that Lowry rests entirely on Bernhart which the PTO itself does not acknowledge as controlling law.
Got anything else, WID?
WID, as I noted, Beauregard claims were challenged at least once but the case was decided on other grounds, as I recall, by Judge Patel. Nevertheless, she seemed receptive to the idea that Beauregard claims were crxp.
WID paper is also a man-made article, which is statutory under 35 USC 101.
So is a compact disc. What’s your point?
until OCR came along, marks on a paper were not “computer-readable.” You could read punch-cards, which differs little from the roller in a piano player, which causes the piano player to perform a different function.
Where are all the patents on piano rolls that differ from prior art piano rolls only by the “encoded” songs?
OK, apparently there is Cybersource Corp. v. Retail Decisions, Inc., 2009 U.S. Dist. LEXIS 26056 (N.D. Cal. Mar. 26, 2009). Anything else?
Of course, paper is also a man-made article, which is statutory under 35 USC 101.
Obviously. But a computer program written on a piece of paper that a computer can read is printed matter with no functional relationship to that paper. Because it’s just a computer-recipe printed on a piece of paper.
If I made a cooking robot that could literally parse recipes, my recipe book would not stop being printed matter.
Also, until OCR came along, marks on a paper were not “computer-readable.” You could read punch-cards, which differs little from the roller in a piano player, which causes the piano player to perform a different function.
UPC codes were computer-readable. And punch cards don’t actually differ from either UPC codes or OCR-readable code or computers reacting to an image of the Magna Carta. They are all ways of putting information on paper, that don’t relate to the functionality of the paper itself, but merely relay an instruction to some device other than the paper to perform a method.
“Occam’s Razor isn’t even a logical rule. It doesn’t make the simpler explanation correct, particularly when the simpler explanation is inconsistent with the evidence.”
What evidence is that? You haven’t provided any evidence — just speculation.
On the contrary, the facts are that Lowry trounced the printed matter doctrine in a computer-realted field just 9 months before Beauregard came out, and the Beauregard remand specifically mentioned that “The Commissioner states that he agrees with Beauregard’s position on appeal that the printed matter doctrine is not applicable.”
If you want to find some inconsistency between the evidence and my conclusion, go right ahead — I wish you the best of luck.
1. A DVD, which when placed in a machine capable of reading said DVD, causes said machine to display [insert novel movie here], wherein said movie is appealing to cats such that said cats get exercise and mental stimulation when interacting with said movie.
I guess WID thinks this the PTO would patent this DVD. But of course the wouldn’t allow the claim, nor would it be found valid if it were ever examined in a court of law. Never mind that the structure of the DVD “although invisible to the eye” is clearly “changed” relative to the prior art structure and, according to Bernhart, which is the sole source of legal reasoning underlying Lowry, this is enough for a patent of OTHER types of computer memory.
So WID has a bit of a problem explaining the situation. Then again, so does the PTO. From a policy standpoint, there is some argument that can be made (right or wrong) that Beauregard claims were necessary “for the public benefit.” But the PTO’s inconsistent application of (bad) law can not be legally justified.
I dunno. Still seems like David Boundy should be upset by this.
They could have easily asked the CAFC for the opportunity to write another brief based upon Lowry (which the CAFC would be more than inclined to allow) or addressed Lowry in a Reply Brief.
Yes, I mentioned that they could have done that. But that contradicts your point that the lawyers were already hired and paid for. This appeal was far from a sunk cost for them. Lowry would have forced them to start over from scratch and make completely different arguments.
You don’t appear to recognize that when Beauregard asked that the “remand order be issued as a precedential order,” the USPTO wasn’t going to get another crack at it.
Well, obviously the PTO wasn’t going to get another crack at it. They didn’t want one. Somebody had clearly made a policy decision that they were going to let Beauregard claims through. If they had wanted a chance to challenge Beauregard claims, they wouldn’t have thrown away the one they had. And anyway, they’re still free to change their mind whenever they want. All they have to do is make the same rejection at the Board again, and the Federal Circuit will have to decide “again”. Maybe they’ll have to do it en banc now, but that doesn’t really matter.
Anyway, the PTO does not decide patent law. The PTO applies its understanding of patent law. Unless you actually ask some judges, which the PTO explicitly avoided doing in Beauregard, you don’t actually find out what the law is.
The PTO does not change the law of Beauregard claims by failing to reject a Beauregard claim, any more than the PTO changes any aspect of the patent law when it allows claims that are later invalidated for any reason. The court simply corrects the PTO’s mistake when the issue properly comes before the court.
“Bearing in mind, of course that paper (the quintessential medium for printed matter) is also a computer-readable medium, and has been so for a far longer time than hard drives, DVDs, or those fancy USB memory sticks.”
Of course, paper is also a man-made article, which is statutory under 35 USC 101. Also, until OCR came along, marks on a paper were not “computer-readable.” You could read punch-cards, which differs little from the roller in a piano player, which causes the piano player to perform a different function.
No, doofus. That’s just one line from a long series of longer comments. But you knew that.
I’m the doofus? I’m not the one spending hours arguing about claims that hardly anyone writes and that apparently are never enforced.
There are over 50,000 issued patents with the phrase “computer readable medium” in them, and “computer readable medium” is only one of many different ways that Beauregard claims are recited. You think none of those patents have ever been asserted?
The question that matters is whether those particular claims were enforced to the extent that someone was forced to pay up or fight the claim. I’m not saying it’s never happened. But I’ve not seen it. Have you?
“I just pointed out that you were a name-calling stooge.” Are you wrapping yourself in that cloak as well? or do you think you are special?
Scratch that, we already know that are special — but not in a good way.
You think none of those patents have ever been asserted?
You think some have? And have they been challenged and upheld under the printed matter doctrine?
Okay then, cite me a case.
It appears you’ve never heard of the concept of “Occam’s razor”
I’ve heard of it. I gave you several equally plausible explanations for why the PTO might drop even a winnable case. You only get to invoke the Razor when your explanation is significantly more plausible than the others.
Occam’s Razor isn’t even a logical rule. It doesn’t make the simpler explanation correct, particularly when the simpler explanation is inconsistent with the evidence.
“And clearly Lowry has some relevance to Beauregard, so they’d have had to either re-brief the case or risk losing based on a legal test they didn’t get the chance to argue.”
They could have easily asked the CAFC for the opportunity to write another brief based upon Lowry (which the CAFC would be more than inclined to allow) or addressed Lowry in a Reply Brief.
You don’t appear to recognize that when Beauregard asked that the “remand order be issued as a precedential order,” the USPTO wasn’t going to get another crack at it. If they had any viable arguments to make, they would have made them. The USPTO’s actions were not “OK, we surrender for now,” instead, the USPTO’s actions were “OK, we surrender and we agree that claims of these types are directed to patentable subject matter and we understand that this acquiesence is precedential.”
And do you agree, WID?
Bearing in mind, of course that paper (the quintessential medium for printed matter) is also a computer-readable medium, and has been so for a far longer time than hard drives, DVDs, or those fancy USB memory sticks.
“Because you also need a plaintiff asserting a Beauregard claim. What with software being the new black and all, you’d think more of these paragons of innovation would be lining up to put their Beauregard claims to the test.”
Hello?? There are over 50,000 issued patents with the phrase “computer readable medium” in them, and “computer readable medium” is only one of many different ways that Beauregard claims are recited. You think none of those patents have ever been asserted? If you happen to be the only person that believes that In re Lowry would kill Beauregard, then that’s a sign — but not a good sign for you.
It appears you’ve never heard of the concept of “Occam’s razor” since your explanations of why the USPTO gave up avoids the most simplest explanation — the USPTO gave up by In re Lowry made their case a loser.
Anyway, good luck overturning In re Beauregard. Let us know when you do.
WID BTW — they said the printed matter doctrine does not apply to the “new field in this case, which involves information stored in a memory.” It is a small step to state that a memory is a subset of a larger group of devices called “computer storage devices,” of which memory, hard drives, DVDs, etc. belong.
And do you agree, WID?
She cries about being called names in one instance, and 37 minutes later, she does the same thing herself – what a hypocritical piece of work.
I didn’t cry. I just pointed out that you were a name-calling stooge. And you remain so.
Oh please, the attorneys are already hired, the cases were probably already briefed.
Yes, but the attorneys have a limited amount of time each, and as you yourself pointed out they have other cases to deal with. And clearly Lowry has some relevance to Beauregard, so they’d have had to either re-brief the case or risk losing based on a legal test they didn’t get the chance to argue.
If it was going to take “a whole lot of painstaking legal analysis and research to argue around Lowry,” then it was likely doomed to failure.
What of cases that require a whole lot of painstaking analysis and research on both sides? Are both sides doomed to lose? Or would you say that sometimes there is actually some value in properly researching and arguing one’s case on appeal?
Regardless, as both I and somebody else pointed out, there have been many motivated defendants over the last 15 years, why have none of them succeeded in taking out Beauregard?
Because you also need a plaintiff asserting a Beauregard claim. What with software being the new black and all, you’d think more of these paragons of innovation would be lining up to put their Beauregard claims to the test.
In response to one of my posts, “Look, it’s another name-calling stooge who can’t focus on the topic at hand. Posted by: Malcolm Mooney | Sep 16, 2010 at 02:00 PM ”
In response to another one of my posts, “Oops, another patent teabxgger has joined us. Or, more likely, just one of the old angry BRIners putting on another sock with the usual holes. Posted by: Malcolm Mooney | Sep 16, 2010 at 02:37 PM ”
She cries about being called names in one instance, and 37 minutes later, she does the same thing herself – what a hypocritical piece of work.
WID Regardless, as both I and somebody else pointed out, there have been many motivated defendants over the last 15 years, why have none of them succeeded in taking out Beauregard?
I’m not aware that anyone has tried to take out Beauregard. Bear in mind that a lot of defendants in software cases have their own Beauregard claims to protect.
There was that case before Judge Patel a year or two ago where she seemed to agree in dicta that Beauregard claims were of dubious validity.
I would love to be able to tell my clients that they can claim chemical compositions purely functionally. After all, I will argue, just because the “physical changes are invisible to the eye, that should not tempt the PTO to conclude that the composition has not been changed” relative to the prior art.
And then I could cite In re Bernhart and In re Lowry.
Hmmm.
“What makes you so sure? The PTO is on a very tight budget even today, and it would have taken a whole lot of painstaking legal analysis and research to argue around Lowry to the satisfaction of the Federal Circuit.”
Oh please, the attorneys are already hired, the cases were probably already briefed. If it was going to take “a whole lot of painstaking legal analysis and research to argue around Lowry,” then it was likely doomed to failure. The USPTO knew it had a loser once the Lowry decision came out.
Regardless, as both I and somebody else pointed out, there have been many motivated defendants over the last 15 years, why have none of them succeeded in taking out Beauregard?
WID Given that the USPTO gets a hard-on to reject anything for any purpose
Oops, another patent teabxgger has joined us. Or, more likely, just one of the old angry BRIners putting on another sock with the usual holes.
Why did the USPTO drop that case and not the multitude of other “In re …” cases to which the USPTO have been party to and have gone up to the Federal Circuit?
How should I know? Maybe because they thought it looked bad to take a hard stance against software in the technological climate of the day. Maybe because they thought it was too complicated or nuanced to revise their arguments in view of Lowry, and they could better spend the same amount of time on a dozen other clear-cut cases. Maybe because the record in Beauregard wasn’t sufficiently developed to easily distinguish over Lowry even though the PTO thought it was right. Or maybe because that was the time they decided that allowing cases was more fun than rejecting them.
I don’t know for sure why they did what they did. Like I said, I’ve never worked for the PTO in any capacity.