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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