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Authored by: Ian Al on Wednesday, October 10 2012 @ 07:05 AM EDT |
What the Federal Circuit say they are considering is
a. What test
should the court adopt to determine whether a computer-implemented invention is
a patent ineligible "abstract idea”; and when, if ever, does the presence of a
computer in a claim lend patent eligibility to an otherwise patent-ineligible
idea?
b. In assessing patent eligibility under 35 U.S.C. § 101 of a
computer-implemented invention, should it matter whether the invention is
claimed as a method, system, or storage medium; and should such claims at times
be considered equivalent for § 101 purposes?
These are two
excellent questions. Unfortunately, for decades the Federal Circuit have shown
that they don't comprehend the issues. The second question does not say what it
means by 'matter'. It should ask how such claims address 35 USC § 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 therefor, subject to the
conditions and requirements of this title.
The patent law does not
say that one invention can be all of 'process, machine, manufacture, or
composition of matter' and the USPTO say that there can only be one invention
claimed in each patent application. So, one patented invention cannot be a
method and a system (aka machine) and a storage medium with software installed
in it (aka not an invention).
Some of the groundwork has already been
set for the first question. The precise definition set by the courts for a
'computer-implemented invention' is ' where software constitutes part of a best
mode of carrying out an invention'.
Fonar v. GE give the legal explanation
about the framework for inventions that include
computer-implementation:
As a general rule, where software
constitutes part of a best mode of carrying out an invention, description of
such a best mode is satisfied by a disclosure of the functions of the software.
This is because, normally, writing code for such software is within the skill of
the art, not requiring undue experimentation, once its functions have been
disclosed.
It is well established that what is within the skill of the
art need not be disclosed to satisfy the best mode requirement as long as that
mode is described. Stating the functions of the best mode software satisfies
that description test. We have so held previously and we so hold
today.
To explore the patentability, or not, of software I use the
example of a novel patented auto gearbox.
If the chosen mode is
mechanical, then the patent is on the arrangement of gears, actuators, clutches
and the control mechanism. The invention is the arrangement of the components
and there may be some novel components that warrant a patent in their own
right.
You can replace the control mechanism with a computer (a
microcontroller) that electrically interfaces with the actuators. What is
patentable is the whole device and not the components. If the original
electro-mechanical control mechanism was patentable in its own right then it
would be the precise control function that would be patented.
Doing the
precise control function with a computer should be equally patentable. The
software/software function would not be patentable, only the computer/electrical
interface/controlling function combination. Most automatic gearbox control
mechanisms will not be any more patentable than the gears they manipulate so
that even the special purpose computer assembly would be the patent equivalent
of a standard nut or bolt.
Although the gearbox is controlled by a
microcontroller, the magic is achieved by measuring the gear speeds and
electro-mechanically operating the levers The actual software in the
microcontroller is irrelevant to the functions claimed for the invention. All
that is important is to state what functions related to engine speed, output
shaft speed, engine power and similar aspects of the design are carried out by
the software.
It is irrelevant what software language is used to
program the microcontroller and what software algorithms or functions are used.
If the same algorithms and functions are used with some other gearbox, then the
other gearbox only infringes if the inventive concept in the patent is also
used. The inventive concept is not in the software functions carried out by the
software, but is in the functions of the gearbox.
The microcontroller
is the best mode of carrying out those control functions, but it could be
replaced by mechanical alternatives. The bit in Fonar that is almost universally
ignored is that the patented invention may be defined only by the functions if
the software is only a part of a best mode and, in that situation, it is
only within the skill of the art once its functions have been
disclosed.
My auto gearbox example (which I have been using for years
to make this point) is the sort of patent that Fonar encompasses. However, Fonar
is clear that if software constitutes all of the best mode for carrying
out an invention, then disclosing the function is not sufficient for a patent
award. Also, if software is all of the carrying out of the
invention then by Benson, Flook, Diehr, Bilski and Mayo the software process
(or software machine) when considered as a whole must be shown to have an
inventive concept.
More seriously, it must be shown that the
software, itself, is patentable subject matter under §101’s implied list of
excluded subject matter including math, “laws of nature, physical phenomena, and
abstract ideas.”.
In other words, anything that is not a novel
invention in the area of 'process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof' cannot be a patented
invention. In Mayo, the Supreme Court has expressed its fury that §101 was being
skipped in the rush to patenting.
[T]he prohibition against
patenting abstract ideas ‘cannot be circumvented by attempting to limit the use
of the formula to a particular technological environment’ or adding
‘insignificant postsolution activity’” (quoting Diehr),
Using a
formula or math algorithm in a computer is limiting that algorithm to a
particular technological environment. Computers only work because they can
execute software and the software has to be mathematically valid algorithms in
its entirety for it to work. All computer programs are math algorithms in each
and every part.
For a computer programmer, the variables become his
pets and the APIs become his toolbox. Only by an abstract visualisation of all
of the 'things' in software, can he write more software. Software starts to use
'objects', 'recognise' 'gestures' and 'play' music. It is not surprising that
this abstract world takes on the mantle of reality. Even software users believe
they are making 'gestures' control the computer. It's all clever stuff. It is
not patentable stuff, under the law.
Since I have revisited so many of
my past rants, it would be churlish to miss some other of my fav.
raves.
In Microsoft v. AT&T the Supreme Court opined that
AT&T's codec was manufactured by installing Windows Media Player in a
general purpose computer. In other words, WMP installed in a computer is an
infringing machine and not a 'new and useful process, manufacture, or
composition of matter, or any new and useful improvement thereof'.
The
installed Windows Media Player and computer was opined to be an infringing
machine. Fonar either tells us that the software on-a-computer is the whole of
the 'best mode of carrying out [the] invention and that defining just the
functions of the invention results in an invalid patent, or it tells us that the
invention is just the math and laws of nature and not the computer. It is not
patentable subject matter. As the Supreme Court said in Mayo v.
Prometheus:
Although “laws of nature, natural phenomena, and
abstract ideas” are not patentable subject matter under §101 of the Patent Act,
Diamond v. Diehr, “an application of a law of nature . . . to a known structure
or process may [deserve] patent protection,”. But to transform an unpatentable
law of nature into a patent-eligible application of such a law, a patent must do
more than simply state the law of nature while adding the words “apply it.” See,
e.g.,
Gottschalk v. Benson. It must limit its reach to a particular, inventive
application of the law.
The AT&T patent asserted that the laws
of nature are such that human hearing does not require all of the data in a
computer digital data file in order to enjoy the content. The patent goes on to
say that a math algorithm may be used to reduce the unnecessary data. The codec
patent was just the math of taking the digital symbols representing audio and
created using the CCITT international standard and reducing the data so
produced, but not required to store the audio symbolised by the binary values.
The only time this is a useful invention is in a computer memory used for
storing the data symbolising the original analogue audio.
The patent
says, use the math whenever using computers for audio to get the best out of the
laws of nature. It makes no claims about the software or the processor or the
computer sound card or the software language or the operating system or the
storage media.
The Supreme Court opined that when software that used
the laws of nature and included the math algorithm was installed in the memory
of a computer that made a patent protectable machine.
In Oracle v.
Google, one of the few patents to survive the USPTO patent review was one that
claimed that resolving the text-based symbolic references to blocks of code
implementing the instruction set of a virtual processor just before the program
requiring the instructions was actually run, was the patented invention.
Resolving the symbolic references at any other time did not infringe
the invention. Google resolved the symbols in Dalvik when the program to be run
using Dalvik was installed in a smartphone and thereby Dalvik did not infringe.
The stand-out points raised by the patent are that,
Computer
software is not 'the best mode of carrying out the invention', it is the
only mode because the patent is an invented method of writing computer
software. How much innovation and experimentation was required to come up with
the invention of the software writing method? Just to remind you what Fonar
says:
As a general rule, where software constitutes part of a best
mode of carrying out an invention, description of such a best mode is satisfied
by a disclosure of the functions of the software. This is because, normally,
writing code for such software is within the skill of the art, not requiring
undue experimentation, once its functions have been
disclosed.
Even though a system, a memory and a method were
all claimed, the invention did not appear in any accused devices. The programmer
used the method to write the Dalvik program and the Dalvik program was deemed to
possibly infringe because the method was claimed as a patentable part of the
skill of the art of writing software.
Even though Microsoft v.
AT&T opined that writing of the software using a patented method was not
infringing. Oracle asserted that installing Dalvik software that was written
using the method of resolving symbols in a smartphone infringed the patented
method because it became a protected system and it was in a memory when
installed in the smartphone.
Using a machine by employing a patented method
to manufacture articles has never been patentable subject matter, except when
the machine is a computer with a software compiler.
The devices
manufactured by employing a patented method have never been considered to
infringe on the patented method, except when the device is software installed on
a computer.
The invention was only claimed to be useful when used to
write software that was used on a smartphone. It was not a useful and protected
invention when used on any other computer.
In other words, the
invention is just about the writing of software and deciding when to resolve
symbols and is well within the art of writing software. It is narrowed to the
circumstance when the symbols resolved are only text-based symbols symbolising
the instruction set of a virtual processor written in software. A virtual
processor is an abstract idea of a hardware processor expressed in software
algorithms. The virtual processor need not be an abstraction of an actual
hardware processor. In this case, it would not be possible to implement an
equivalent hardware processor because the architecture of the computer only
includes binary numbers to symbolise computer instructions. The hardware
processor would have to include a software preprocessor to load and interpret
the text-based symbols. Because the invention is a patented method of writing
software, it can only be infringed by practising the method.
Any
software manufactured by practising the method cannot, of itself, infringe on
the patented method. Software written using a patented method cannot turn into a
patent infringing machine depending upon in which computer it is installed.
However, that is what is patented in the Oracle patent.
So, nice
questions: shame about the comprehension.
--- Regards
Ian Al
Software Patents: It's the disclosed functions in the patent, stupid! [ Reply to This | Parent | # ]
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Authored by: Imaginos1892 on Thursday, October 11 2012 @ 01:53 PM EDT |
Software is NOT a machine, method, or process. It does not function, or
transform, or actually
do anything. It is merely a description
of a method or process to be performed by a computer.
It has to be a very
detailed description, and it can be very difficult to get it exactly right, but
it
remains only a description or definition of a series of operations to be
done by a machine
which may not even be specified at the time the program is
written. This is in addition to it
being math and abstract
logic.
--------------
"Camelot!"
"Camelot!"
"Camelot."
"It's
only a model."
"SSHHHHHHH!!!!"[ Reply to This | Parent | # ]
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