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courts which have deliberately rejected this | 756 comments | Create New Account
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courts which have deliberately rejected this
Authored by: Anonymous on Monday, July 23 2012 @ 07:24 AM EDT

I intended no disrespect and you are of course free to write what you wish. And perhaps I am too used to thinking as a lawyer.

But you challenge a line of case decisions in the Federal Circuit and its predecessor court ruling on the novelty issue and quote from those decisions and their dissents. You are not addressing a line of holdings on patentable subject matter or vagueness. In context, whether executing a program on a general purpose computer creates a "new machine" is a mixed question of fact and law because the legal part is whether it's a new machine within the meaning of the patent law's novelty requirement.

And from that standpoint, establishing that the factual finding is a fiction does not reach the legal (policy) issue of whether it is a desirable legal fiction. Law is not necessarily troubled by reliance on imaginary facts. See e.g., Trustees of Dartmouth College v. Woodward, 17 U.S. 518, 4 Wheat. 636 (1819) (Marshall, C. J.) ("[a] corporation is an artificial being, invisible, intangible, and existing only in contemplation of law").

Because your article does not address the policy issue of whether this is a suitable situation for a legal fiction to be employed, I believe that your argument would be strengthened considerably if integrated with a line of rulings by a superior court (the Supreme Court), holding in effect that there shall be no legal fictions in relevant regard.

Hitting a different nail with the same hammer does not legally create a new hammer because granting such a patent would subtract from rather than add to the tools available to skilled artisans, thus frustrating the very purpose of the Constitution's Patent Clause. It is not a new use within the meaning of the patent law.

It is just so with general purpose computers executing different programs. Altering bit register states to match a program's input is what a computer is designed to do. Nothing that a program can accomplish can be unforeseen by the prior art of the computing device, else the device could not execute the program.

Thus the question devolves to whether different bit register states and sequences of such states are non-obvious enough within the meaning of the patent law to constitute a new use for an old machine or process.
For over a half century, the Court has held that a "patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men." Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 152 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.

KSR Int'l v. Teleflex, 550 U.S. 398, ___ (2007), Slip Op. at pp. 11-12.

Are software patents "combination which only unite[] old elements with no change in their respective functions?" Does a software patent "withdraw[] what is already known into the field of its monopoly and diminish[] the resources available to skillful men?" Are different bit state arrangements and sequences of such arrangements "familiar elements?" Are the methods of creating such states and sequences known? Are the results predictable? These are the kinds of issues I would very much like to see a later article by you address specifically within the context of controlling Supreme Court precedents.

With the dissenting opinions pointing out that the "new machine" recognized by the appellate decisions was a fiction and those dissents going unanswered, I think it obvious that the judges who decided there was a "new machine" knew that they were creating a legal fiction. In that light, it is the propriety of the legal fiction in context that is the real issue, not whether it is factually wrong (although its falsity must be proved as well). That is where the line of Supreme Court decisions I point to comes in. They say in effect that the lower court decisions you criticize applied the wrong legal test in deciding the novelty issue. And that is proper legal grounds for reconsidering/overruling them.

Paul E. "Marbux" Merrell, J.D.

[ Reply to This | Parent | # ]

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