The Supreme Court held argument this afternoon in an important case on the scope of patentable subject matter, Bilski, et. al. v. Kappos. The Justices were very skeptical of business method patents during the argument; read a summary here or the transcript here. I personally agree with the Federal Circuit’s standard, so I was glad to learn of the Justices’ skepticism. For more of my own thoughts on these issues, see here.
Oren says:
This is fantastic news.
November 9, 2009, 9:51 pmJohn Moore says:
This is very good news.
Business method patents, created by a SCOTUS ruling, are idiotic and harmful.
November 9, 2009, 10:46 pmSoronel Haetir says:
I like that the court was skeptical of this commodities hedging even if it were bundled into a website for buyers and sellers to find each other.
November 9, 2009, 11:14 pmBruce Hayden says:
One problem is that Bilski is now being interpreted, esp. by the USPTO, as seriously curtailing software patents. And, that is not good. We have hundreds of billions of dollars a year in R&D in software in this country, and we really need to be able to protect that investment.
November 9, 2009, 11:16 pmTCO says:
Copyright it.
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November 10, 2009, 12:16 amBruce Hayden says:
First, you get into the same problem, only reversed. Copyright does not protect functionality, but just expression. Secondly, it requires copying.
If you will remember back, before software was fairly well accepted as patentable subject matter, we went through a phase of non-literal copying of software (closely related to look-and-feel). Last I knew, the Circuits are still not all on the same page there. So, you get different results if you file suit in different Circuits. But, notably, at a high level, the functionality of the software is not protected. With Altai type filtering, one of the things that you filter out is the idea. It is only how the idea is implemented that may be protected.
One of the things that patent law provides is protection against independent invention. Also, patents have much more discrete boundaries than do copyrights through their patent claims (ok, I know that those boundaries are not precise, but they are far far more precise and explicit than in copyright).
Non-literal copyright litigation pretty much died out when software patents took off in the mid to later 1990s. And, having worked with both, I will vote for protecting software inventions through patents any day over the mess that you find with copyright (unless, of course, you can prove actual copying of the code, which is rare).
November 10, 2009, 12:16 amMLS says:
I cringe whenever I hear or read discussions (and transcripts) about “business method” patents where none of the participants have taken the time to explain what they mean by the term “business method”.
Then again, the same can be said of “software”, “algorithms” and other terms of similar ilk.
Intellectually honest and informed debate, so it seems to me, demands that the participants each utilize a common definition. Perhaps then people would come to the realization that the true substantive aspects of patent law reside within Sections 102, 103 and 112.
November 10, 2009, 12:18 amMark N. says:
I’m not sure things like “click once to check out” and “a news feed embedded in a web browser” (to pick two of the sillier software patents) are really important innovation. If they restricted it to inventions truly non-obvious to an expert in the field, it might be more reasonable.
November 10, 2009, 12:19 amOrin Kerr says:
Bruce,
Even worse, Bilski is getting in the way of my patent for “a method of writing a really awesome blog post.” I’ve been spending time perfecting the method for the last six years, and I would have never done it without the promise of a monopoly right in what I came up with.
November 10, 2009, 12:20 amBruce Hayden says:
Having just read the transcript of the oral arguments, I am less optimistic than I had been going into them today that software patents are going to survive. I had assumed that most of the Justices had enough experience with computers and software so that they wouldn’t fall into the technologically illiterate mistakes made by their predecessors. And, I was even more optimistic when J. Sotomayer replaced technophobic Justice Souter. But even Justices Breyer and Sotomayer who had both apparently done IP work before going on the bench didn’t seem to understand that the computers that they use every day (and their cell phones, etc.) all depend on software to provide the functionality that they take for granted. C.J. Roberts’ analogy with a typewriter is right out of the 1950s.
November 10, 2009, 12:22 amBruce Hayden says:
Even if it were patentable, I would love to see you try to enforce it.
November 10, 2009, 12:23 amBruce Hayden says:
But there you go confusing 101 with 103. If it is obvious to a person reasonably skilled in the relevant art, then it would not be patentable under 35 U.S.C. 103(a).
I should also add that the fact that someone can get a patent on something does not really guarantee that the patent is valid and enforceable. Yes, there is a presumption of validity, but that can be, and is routinely, overcome.
November 10, 2009, 12:27 amBruce Hayden says:
I do think that the distinction between software or an algorithm implemented on a computer is quite different from the software or algorithm existing in someone’s head, or even printed on a T-shirt (remember PGP?)
November 10, 2009, 12:30 amJim W says:
My only worry (as a patent attorney who specializes in software) is that they will look at the machine or transformation test and decide to raise the bar high enough that it invalidates a ton of software patents (ie, patents that are currently statutory). My hunch is that they won’t do this. I suspect “abstract-only methods” are going to get canned and nothing more.
I interned in the software art unit a few months after the May 2008 §101 memo came down and I happen to know a thing or two about this area. I can guarantee you that nothing remotely resembling Bilski would get past 101 scrutiny.
Bilski is a process that isn’t tied to ANY statutory class. They were catching people out on stuff like “software process tied to X” where the specification defined X as a bunch of statutory things and something like a signal or a piece of paper. Under “broadest interpretation possible under the spec” they’d interpret it as being software tied to a signal and boom, non-statutory. Bilksi is so far over the line that it wouldn’t even be worth fighting over.
But this was 2008, not 1997 when the bilski app came in.
November 10, 2009, 12:32 amBruce Hayden says:
Let me suggest though that Bilski was probably not examined in that area.
The reason that I worry about software patents surviving Bilski is that since the decision in the Federal Circuit, a lot of the examiners in the software arts seem to have gotten religion as far as rejecting a lot of software claims that a couple of years earlier would have flown through.
What are causing me a lot of trouble right now are patent claims for inventions that cannot function without a computer, but the drafter of the application did not put in enough support. I have been including a stock drawing of the components of a computer for 15 years or so now, and tying it to the invention. So, I don’t have a lot of trouble with my own software applications. It is just I am having serious problems right now with those written by a generation of patent attorneys and agents who learned their craft after software patents had become accepted, and many of those applications do not have the needed computer.
November 10, 2009, 1:00 amOrin Kerr says:
Bruce Hayden writes:
I think I’m reasonably technologically literate, between having a Masters in engineering and specializing in computer-related law, and I’m not sure why you think the questions reflected technological ignorance. True, the questions suggested that the Justices disagreed with you, but I don’t know why that makes their view technologically illiterate. Can you explain a bit, perhaps?
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November 10, 2009, 1:30 amJoe Kowalski says:
Bruce there have been several in-depth economic studies into software patents and the general gist is that they have been a net drain on the industry and haven’t been a driver of innovation. For Software companies, patents are defensive tools to protect themselves from the patents of other companies. With an industry that has such low barriers to entry and incredible ease of independent reinvention, patents just don’t make sense over the long run. They might be great for patent lawyers and trolls, but virtually no one else.
November 10, 2009, 1:34 amJim W says:
Oh yeah, those guys are definitely screwed. But you seem to have figured that part out already.
I dunno what to say. The federal circuit probably encouraged a lot of applications in state street that are now going to end up in the abandoned pile.
But I think that this comes with the territory of pursuing applications at the edge of patentable subject matter. I don’t think anyone didn’t realize that business method patents were a gray area that could potentially be scaled back at some later date.
November 10, 2009, 1:37 amMark N. says:
I suppose I don’t see much of a distinction if the algorithm is implemented on a general-purpose computer, in a straightforward way that would be obvious to a programmer. It’s established law that if I invent a new algorithm, I can’t patent it. Even if the current patent regime were in place at the time (and he lived in the U.S.), Newton could not have patented “Newton’s method” for finding roots of a polynomial, because it’s simply a mathematical algorithm. But you’re arguing that he should’ve been able to patent “Newton’s method implemented on a general-purpose computer”?
November 10, 2009, 1:37 amBruce Hayden says:
In particular, I have long held the belief that the Justices who were in the majority in the early patent cases like Benson really didn’t understand the technology, and, in particular, software. The idea that software could be considered equivalent to mathematical equations and laws of nature really misunderstands the functional nature of software. Of course, in their defense, software at that time was still fairly esoteric. You had those big glass rooms with a lot of big humming machinery, and it magically computed things. And most of the Justices had been born early in the century, or even in the previous one. I still think that Benson probably should have been patentable.
As for the current Court, first some of the Justices didn’t seem to be able to keep the machine-transformation test right (ok, they are the ones who will be setting the test, so it is whatever they want it to be). It seems like some were taking the view that implementing software on a general purpose computer would not pass the machine-transformation test. Or, something like that. And my question about technology there is that likely use computers every day, as well as cell phones, etc., and what makes the operation of those devices useful is the software programming. And, it is the discounting of that that I question.
Also, the section by the Chief Justice suggesting that the result of the line of argument was that typing out the method on a typewriter would make it patentable. That seems to ignore the functional nature of software loaded into (or typed into) a general purpose computer. And a software development project that costs hundreds of millions of dollars is a far cry from using a calculator to divide numbers by two.
November 10, 2009, 1:38 amBruce Hayden says:
The problem with your statement is that it is only partly true. The term “Algorithm” ranges from, say, Newton’s method that you mention all the way through such complex software as the operating system on which you are composing your comments. Newton’s method there is pretty close to a law of nature. Windows Vista is not. Another thing – Newton’s method was originally invented for use with pen, paper, and in his head. It was only later implemented on a computer. Windows Vista has no function whatsoever outside a computer, and indeed, needs a computer to operate.
Maybe the difference here is that Newton’s method is, at some level, a discovery, instead of an invention. It is not a feat of engineering, like Windows is (no matter how flawed), but rather, a scientific truth. And the prohibition against patentability is for those scientific truths, and not for feats of engineering.
November 10, 2009, 1:48 amOrin Kerr says:
Bruce,
Thanks for the response, although I guess I’m not sure why you see those questions as suggesting technological illiteracy. It seems to me that where you and the Justices part ways is on an economic question of whether patents covering software are a net social benefit or a net social harm.
November 10, 2009, 1:49 amBruce Hayden says:
You could say the same thing about semiconductors. You probably can’t make an IC without infringing the patents of at least a dozen companies. Probably more. And not one, but likely hundreds. They really don’t act as much of barrier to entry either in that field. Rather, the barrier to entry these days is the cost of new fabs. But I don’t see any movement to eliminate semiconductor patent protection, despite almost all of those patents being defensive and used almost exclusively to shuffle royalty payments back and forth between the different companies making the ICs.
Besides, patenting software is new enough that it hasn’t really settled out yet. Fifteen years ago, Microsoft and several other prominent software companies had essentially no patent portfolios. So, they had nothing to license, and no real programs in place to patent their inventions. And, most likely, when your economic studies were being taken, things were not as settled as they are now, and even less settled than they will be in another decade or so.
So, why is it even relevant whether one type of patent helps innovation at this point in time? You could go out and find numerous other areas where that is also true. But come back in another decade or two, and that list is likely different. But even that is irrelevant. Congress is the entity that determines whether or not the patent laws support their Constitutional justification or not. Congress did not specify that patentable subject matter was limited to technologies that were advanced by patent protection, and did not cover those that were not.
November 10, 2009, 2:03 amBruce Hayden says:
I am not sure that I saw that in their questions. And, I also don’t think that is really their place to decide whether patents covering software are a net social benefit or a net social harm. That is for Congress to decide. (Of course, that doesn’t mean that they won’t make that decision). They don’t have the resources to realistically make that decision.
November 10, 2009, 2:07 amreadery says:
Claiming that a business method is patentable simply because it is executed on a computer is a bit like claiming one can patent a work of literature so long as one specifies the motions needed to type the words in
November 10, 2009, 2:07 amKen Arromdee says:
This is only true because the definition of “obvious” is stretched to the point where it has little to do with obviousness in a non-patent-law sense. It is indeed possible, and routine, to patent things that would be considered obvious by most non-lawyers.
November 10, 2009, 2:09 amOrin Kerr says:
Bruce Hayden,
Whether it is or isn’t their place to decide that (and whether they agree) seems irrelevant to your critique, though, which I thought was premised on the Justices being technologically illiterate.
November 10, 2009, 2:12 amBruce Hayden says:
I am not sure if I am the one running in circles, or you are. My last comment was in response to what I saw as a suggestion that the Justices were looking at whether some types of patents were a social benefit or a social harm. And, I really didn’t see that sort of analysis in the oral arguments, or at least not in regards to software patents. And, I am probably fairly naive, but I don’t see a majority of this Court really dwelling on that. Rather, I would think by temperament and judicial philosophy, the majority is more likely to look at precedent and Congressional intent, instead of whether it causes social harm or provides a social benefit. This doesn’t mean that I really have any idea what the final outcome is going to be, because I don’t.
November 10, 2009, 2:21 amreadery says:
Justice Sotomayer had suggested that the decision be limited to what is excluded without attempting to define what is included, given the uncertainty about what ought to be includable. There seemed to be resistance to patenting business methods, but not software as such. I don’t believe any of the Justices were interested in a definition of patentability that would render Microsoft Windows (in its various incarnations) unpatentable, and I don’t think they considered it equivalent to dividing by 2 on a calculator. I think Justice Robert’s calculator analogy was saying that simply making some small use of a computer isn’t enough to turn a business method into something analogous to an operating system. In the very act of making this distinction, I believe he was assuming that a genuine operating system is patentatble.
November 10, 2009, 2:25 amBruce Hayden says:
And, I am sure, stuff that is not novel either. But getting a patent allowed is very different from getting a patent that will survive litigation. One big problem is that the USPTO has limited resources to apply to examining each application. And, as a result, they do an incomplete job. In contrast, if there is enough money at stake in litigation, much better prior art is likely to be turned up by alleged infringers, since they aren’t spending less than a thousand dollars searching for prior art, but potentially tens of thousands of dollars.
The legal definition of obviousness, in the end, really is a lot more functional than those who are not involved in patents may think. In order to show obviousness, you typically need to find several patents or other publications that, combined, cover each of the claim elements. This is a lot more deterministic than the alternative, which would be having each side’s expert witness opine whether or not the claims were obvious or not. If you can’t find those references, even with the incentive of a million dollar judgment hanging over your head, then the claims probably are non-obvious.
I should also note that the legal definition of obviousness keeps the examiners somewhat honest. It is bad enough that we get arguments from them that it would have been obvious to put those references together. Imagine trying to overcome a rejection of claims if it was based on a gut feeling by the examiner. It may not be the best way of determining patentable subject matter, but it is better than any others we know of.
November 10, 2009, 2:33 amBruce Hayden says:
I hope you are right there. We won’t know, of course, until the opinion is published.
November 10, 2009, 2:35 amzuch says:
I tend to agree that such are [should be] outside the realm of patentability … much as are algorithms. What’s worse is the patenting of genomes: Run the sequencer, hurry with the tapes (or disks, or memory stick) to the patent office….
Cheers,
November 10, 2009, 2:36 amBruce Hayden says:
But genomes are problematic on a utility basis. For years we have had people being rejected for patents because they couldn’t tell the USPTO what a gene was good for.
Another problem you have there though, is who is the inventor? If everything is automatic, then is the designer of the machine the real inventor? But even that doesn’t make sense.
November 10, 2009, 2:45 amprogrammer lawyer says:
One concern I have with relying only on copyright is that a person skilled in the art can copy features of an innovative software product after seeing it in operation. Copyright provides no protection for that innovation, where an equally innovative mechanical product would receive protection.
Another concern is that technology has been moving towards replacing specific function circuitry with more general purpose circuitry (computers) with software to allow the overall machine to perform the specific function (and many others). A patent system that favors protection for specific-purpose circuitry but not software might impact the march of technology innovation to favor one mode over the other in ways that would be otherwise contrary to what the market would prefer.
November 10, 2009, 3:24 amprogrammer lawyer says:
I used to work on creating bioinformatic tools for a large pharmaceutical company. As far as patenting genes goes, I would be more in favor of patenting the systems for identifying the relevant genes rather than the genes that the brute-force computer programs and statistical models identify. With the current system, there has been a race between computers (and the companies) to identify patentable genes, rather than the historical method of hypothesis-driven research leading to patentable treatments.
November 10, 2009, 3:30 amTruePath says:
Orin,
Speaking as someone who works as a pure mathematician but studies (idealized) computations I don’t see how you so easily draw the distinction between computer code and pure mathematics. In my subject (recursion theory) we literally we prove what problems can and can’t be decided by a computer, often by offering what amounts to a high level description of a computer algorithm.
Or to make the issue more precise if someone shows that P=NP by describing a P time algorithm to solve SAT is that or is that not patentable. It’s clearly an abstract mathematical idea but it’s also a description of an algorithm.
Moreover, the process of finding proofs of mathematical theorems (requiring strategies, concerns about efficiency etc..) is in both a vague and precise sense the same as the process of discovering algorithms to compute particular quantities.
Moreover, consider something like the google pagerank patent. No one was in doubt about how to solve for eigenvalues of a matrix or otherwise implement the idea covered in the patent. Specifically what was novel was simply the idea that if we define such and such a quantity (described in abstract mathematical terms) it gives a good measure of the importance of a page.
November 10, 2009, 7:10 amTruePath says:
Bruce Hayden:
I don’t think the questions reflect technological illiteracy as much as a desperate attempt to keep alive the untenable distinction between abstract mathematical claims and the interesting parts of computer software (no one cares about patenting the exact sequence of source statements).
Still I don’t actually see any problem with invalidating software patents across the board. I strongly suspect that they are a net cost to almost all software companies so who cares if they throw out these patents.
Even ‘good’ patents like pagerank seem largely unimportant. I mean if Bing used something similar they would just keep it a trade secret and the cost or pursuing the lawsuit and facing the huge array of random patent claims that MS might bring in response just makes enforcement unattractive.
November 10, 2009, 7:16 amToby says:
Seems a lot of rent seekers are out in force today. It wil be a great day for innovationand the country if and when 90% of all software patents are invalidated. There is lot’s of stuff that has neverbeen used, never been demonstrated, and has no current commercial use that is patented defensively to trade with someone somewhere some time to get out of some future suit.
And the comment that “that a person skilled in the art can copy features of an innovative software product after seeing it in operation” actually suggests that these things should not be patented,or afforded any protection whatsoever.
“a person skilled in the art can copy features after seeing innovative embroidery on a fabric”
“a person skilled in the art can copy features after tasting innovative cuisine”
November 10, 2009, 7:20 amPatHMV says:
Bruce, you’ve made the point several times about the distinction between a patent being issued and a patent surviving litigation. It is true that there is a distinction, but that doesn’t help the folks who are allegedly infringing on that patent who don’t have a lot of cash to spend on litigation. Once the patent is issued by USPTO, it becomes a club with which to bully everybody in the field. Patent trolls usually have enough sense not to push too hard against those with the deepest pockets, so they extort a great deal of money from alleged infringers, money which would be much better spent on pursuing further innovation.
Let me ask you this. Do you deny that there’s any problem at all in this area? I realize you’re defending a position undergoing fairly stiff attack in this forum, and kudos to you for the valiant effort. But I think there’s pretty wide-spread agreement out there that stuff like “one-click shopping” is a serious abuse of the patent system and a hindrance to innovation that benefits the consumer. At the same time, your point about the inventiveness of the software hidden in the bowels of our cell phones and the like may have some validity. What I don’t see is any effort to eliminate at least some of the abuses, while preserving the parts that have some merit. Can you suggest a solution?
November 10, 2009, 9:52 amKen Arromdee says:
Software can be written by one guy in a garage. One guy in a garage can’t afford to be sued, so he has to treat the patent as valid no matter how bad it is (especially if the patent owner has a thousand other patents to fall on to intimidate the guy). It’s true that the patent owner also can’t get much money from him, but sometimes the patent owner just wants to remove the competition caused by guys in garages, not recoup damages.
Which leads to the problem where something really is obvious (in a non-legal sense) but nobody has done it on a computer yet because it’s not practical. As technology advances, it becomes practical, and at some point there’s a first person to do it. The first person to do it patents it, even though the ability to patent no way helped the industry (since it’s so obvious that anyone would discover it) and he gets to lock everyone else out.
November 10, 2009, 9:55 amDjDiverDan says:
Ditto what Bruce Hayden said – far too people understand that copyright protects ONLY the manner of expression, NOT the underlying ideas, methods, or processes. If you want a quick primer on copyright & software, read the two 5th Circuit Opinions in Engineering Dynamics, Inc. vs. Structural Software, Inc. — EDI did get some limited copyright protection for its User interface – i.e., input and output formats, but even that can be worked around if the programmer is careful not to copy too much (leaving open the very hard question of what is “too much”).
November 10, 2009, 10:00 amJay says:
“Seems a lot of rent seekers are out in force today.”
Can we ban the phrase “rent-seeking” from blog comments? To the extent it has any meaning, it’s pretty obvious and doesn’t require any special phrase–interest groups seek regulation in their favor. Beyond that, it doesn’t really do anything beyond serve as a highly valent marker of pseudism.
November 10, 2009, 10:16 amJust Dropping By says:
The problem I have with statements like this is that it’s effectively an argument against any sort of deregulation — “The Civil Aeronautics Board shouldn’t be abolished because the airlines have invested billions of dollars based on the the Board’s past rulings and we really need to be able to protect that investment!”
November 10, 2009, 10:28 amOrin Kerr says:
Jay writes:
Only if we also ban the phrase “highly valent marker of pseudism.”
November 10, 2009, 11:03 amGarrett says:
I work as a software developer (views expressed do not necessarily reflect those of my employer) and what I’ve noticed is that there are 3 major classes of Really Bad software patents which seem to get approved.
1) Problem description patents. This is where somebody, as a part of development or true innovation, runs across a problem that they are going to solve. However, the patent filing doesn’t address the particular solution, or else the particular solution is obvious. You either have filings along the lines of “Method for deactivating luminary in a residential dwelling. Flip switch to off position”, or “Method for addressing lack of cleanliness on walking surfaces” followed by an 80 page document describing dirt adhesion, color determinations and a few diagrams of puppies, with statements so broad that *any* method of cleaning a floor is now patented, but with just enough specifics and cross-discipline knowledge that it passes through the patent office.
In short, if a person by definition can’t come up with a different solution to the problem being described, it should be dismissed as either over-broad or obvious.
2) On The Internet patents. Take some everyday activity and add “on the Internet” to the end, and you’ll get the gist. “Method for selling stuff. On the Internet” “Method for distributing CDs. On the Internet”. “Method for washing laundry. On the Internet”. This is not new – this happens with all new technology shifts. Richard Feynman, a well known physicist, worked on the early stages of nuclear weapons design. Once the whole thing became known he was approached about patenting as much stuff about atomic power as possible. At one point he made comments as an aside about how you could use it to power a submarine, or an airplane, or just about any thing else. It’s a power source. To his surprise, he ended up getting one of the patents issued to him some time later. From a single half-sentence description.
If it’s an old problem solved “on the Internet”, or with any new technology, it should be dismissed as obvious. Figuring out how to get nuclear power on a sub is interesting and innovative. The idea of doing so isn’t.
3) Business decision patents. Amazon.com’s One Click Shopping patent in a nutshell. Simply put, prior to this “innovation”, there was a large amount of concern about customers screwing up. My experience is that about half of the code in a piece of software is to allow users to recover from doing something stupid. The “Are you sure?” prompts are the cheapest way of doing this. Users don’t like them, but they are easy to implement and test. So the idea that someone browsing along might accidentally order themselves the wrong book (or a pet elephant) was a concern. You wanted to avoid customer angst if they pressed the wrong button. The idea that customers might *want* to be able to do this was not a technical limitation. Indeed, one click ordering is actually *easier* to implement because you don’t need to have shopping cart software with backing databases and so forth. Click it, ship it. Done. It was a business decision to do that, not a major technological advance. Put it another way. If the fashion industry is convinced that nobody wants fuchsia-colored pants, and a retailer breaks from the masses and offers them for sale, patenting selling fuchsia-colored pants is just dumb. It’s a business decision, not an innovation.
If these 3 categories are eliminated, it will go a long way towards making software patents more respectable.
November 10, 2009, 11:44 amSoronel Haetir says:
Bruce,
How about an algorithm example that will be seen as much further from the edge than Newton’s method. RSA encryption (I’m aware it has long expired).
I am guessing this is the sort of thing you are trying to maintain protection for, much more than the hedging method at issue before the court, despite the fact that at its heart it is nothing more than a set of mathematical operations. Math complicated enough that there is likely no one who could properly execute it in head, possibly even on paper. Despite this such an algorithm is close to being a natural law IMO.
And that is the problem with all software patents really. The patent is on the basic mathematical operation with the software as just one potential realization.
November 10, 2009, 11:44 amMLS says:
Ignoring that this comment was in response to an earlier comment, it is in my view abundantly clear that the power to determine what does and what does not “promote progress” is vested by Article 1 in Congress. For the justices to even be talking/musing about “does this promote” and “does this hinder” misses this point entirely. Moreover, I am struck by the seeming inconsistency between these questions and the court’s Eldred opinion that such “balancing” by Congress is subject to a high degree of deferrence to Congress using “rational basis” as the governing principle.
BTW, I am not so much troubled by the MOT test as I am at the notion held by many that the Bilski and Warsaw method is not a “transformation”. I am not at all sanguine that Steve Comiskey could be said to have transformed something into something else, but I do not view Bilski and Warsaw’s method in the same vein.
November 10, 2009, 12:01 pmCDU says:
But the fact that software is patentable now isn’t based on any sort of act of congress, it’s based on a series of decisions by the Federal Circuit back in the ’80s and ’90s.
November 10, 2009, 12:12 pmJay says:
Orin- Oh come on. My pretentious phrase was original, not cribbed from Marginal Revolution.
November 10, 2009, 12:36 pmKen Arromdee says:
Garrett: Don’t forget type 4: interoperatibility patents. The reason people want to use gif or mp3 or FAT32 filenames or Microsoft Word format is not their innovativeness or how good they are; it’s to be compatible with other programs that write or read them.
November 10, 2009, 12:42 pmEinhverfr says:
Bruce Hayden:
I disagree. I think software patents need to be curtailed though not eliminated. In general what often passes for a software patent is a patent on a vague method which usually lacks the sort of precision and boundaries I tend to see when reading plant patents, physical device patents etc.
November 10, 2009, 1:02 pmEinhverfr says:
Soronel:
This leads to a question as to whether a software patent can be violated mechanically (i.e. by a large mechanical device similar in size and scope to a difference machine, or the early Z1 mechanical math machine).
November 10, 2009, 1:04 pmSoronel Haetir says:
I suppose one thing RSA has going for it is the precision mentioned above. There is nothing vague or ambiguous in such a claimed invention. This is vastly different from one-click or buy-it-now.
November 10, 2009, 1:23 pmKuzbad says:
Bruce Hayden / any others,
Full disclosure–I’m a computer guy who is walking into this conversation very skeptical of computer patents. Here’s my question–can you (or anybody else) provide an example of a software patent which clearly OUGHT to be patentable?
That is to say, it’s incredibly easy to find myriad examples of reprehensible software patents and to point out examples of companies trying to patent everything under the sun in the name of mutually assured patent destruction. I don’t think there is any disagreement that there are many bad patents, but what about the good patents? Can we see an example of what software patents OUGHT to be like?
November 10, 2009, 2:41 pmSoronel Haetir says:
I would argue that if any pure algorithm should qualify then RSA would be the perfect exemplar.
November 10, 2009, 2:53 pmGarrett says:
Kuzbad, Soronel Haetir:
I’d add Reed-Solomon Coding to that list. Very close to pure math, but incredibly important for things like Satellite communications and CDs. Granted, when first developed the general view was that it was cool but no one would *ever* have enough processing power to make it useful. It was really ahead of its time. I don’t know if a patent was ever issued (or applied for).
November 10, 2009, 3:36 pmCDU says:
In other words, it requires interpretation in order to stretch the statute to cover software. You seem to be objecting to the prospect of the courts adopting an interpretation other than the one you prefer. That’s a pretty loose definition of judicial activism.
November 10, 2009, 3:46 pmBruce Hayden says:
And judge made law that made it unpatentable before that. The problem is that the patent statute (notably 35 USC 101) is very broad when it comes to statutory subject matter. As some court pointed out, anything under the sun is patentable if it falls into one of the four statutory classes and doesn’t run afoul of other parts of the Patent Act (35 USC). But, then judges have carved out some exceptions over the last 200 years, notably the laws of nature exception discussed above. Plus, maybe, a written matter exception. In the early 1970s, software was piggy backed onto the laws of nature judge made exception by analogizing that software involved algorithms, algorithms were mathematical equations, and they, in turn were akin to laws of nature. From the point of view of someone who has been programming now for almost 40 years, that analogy seems pretty bogus for most of the code I have written and most of the software patents I have written and/or prosecuted over the last almost 20 years.
I will agree with the above poster who pointed out that the RSA algorithm is the sort of algorithm or equation that is close to being factual, fairly close to the Newton approximation method mentioned above. But that is rare in software. As noted above, the only reason that we consider Windows a law of nature is Microsoft’s monopoly position in the market.
November 10, 2009, 3:51 pmCDU says:
As long as we’re in the realm of encryption algorithms, would you say that Bruce Schneier’s Solitaire cipher is patentable? It seems quite a stretch to say that a set of instructions for manipulating a deck of cards is patentable. Yet it’s rather difficult to draw a sensible line between Solitaire and RSA.
November 10, 2009, 3:51 pmBruce Hayden says:
Actually, I would suggest that it takes interpretation to shrink it so that it does not cover software.
November 10, 2009, 3:55 pmJoe Kowalski says:
Google just got itself into a suit with a small mobile phone software developer over a method that dramatically reduces the size of binary patches to a piece of software. Google uses this method in a program they wrote called courgette to reduce the size of the patches it sends out for Chrome, but Red Bend (the mobile phone software company) has a patent on this method and has filed suit against Google. At LWN.net (a Linux/Open Source site, generally opposed to software patents) there is an article (temporary link that LWN allows subscribers to on occasion post, please don’t abuse) that explains the situation and several commenters to the article indicated that Red Bend’s patent might fall into the category of a “Good” one.
Now while there are probably some decent gems in the software patent universe that do “promote the progress of the art” they are far outnumbered by junk and I have yet to see a credible method that the patent office can use to reliably separate the wheat from the chaff.
November 10, 2009, 3:56 pmBruce Hayden says:
My boss clerked for that judge, and one of his favorite stories of his clerkship is some litigant trying to explain the meaning of the patent statutes. The judge retorted that he thought that he did know the meaning of the patent statutes. It was only later that the litigant figured out how foolish he had looked.
November 10, 2009, 4:00 pmCleanville Tziabatz says:
Umm, no. The statute defines four broad categories of subject matter which are patent eligible subject matter. Like I said above, software invariably falls within two of those categories, and, in its commercial aspects, will invariably fall into a third. It does not fall into the fourth (at least until they can encode software into genetic type material). To be patent eligible subject matter, of course, software needs only fall into one category. However, it falls into three and none of the categories need stretching to accomplish this result.
Have you read section 101 by any chance?
November 10, 2009, 4:03 pmBruce Hayden says:
Part of it is probably whether you are reasonably skilled in the relevant art or not. I think that I am, and therefore probably can understand what it would take to make disclosed inventions work better than someone who is not.
That said, there are some software patents (and a lot more patent applications) that lack sufficient disclosure. But, that is not a 101 problem, but rather, is a 35 USC 112 (esp. Paragraphs 1 and 2) problem.
November 10, 2009, 4:05 pmCDU says:
I have, and what it actually says is:
All software is simply a set of instructions. It obviously isn’t a state of matter, a machine, or a method of manufacture. The only possible place it could fit in under the statute is as process, and I think that is quite debatable and open to interpretation.
November 10, 2009, 4:16 pmBruce Hayden says:
While patent trolling may be easier in software patents, it is not limited to that realm. Indeed, arguably the biggest abuser of the patent system was Jerome Lemelson (though there is no indication that he ever did anything anywhere close to illegal). He made close to a half a billion dollars on patent applications claiming technology invented 30+ years after his priority dates. And part of how he did this was to sue, and then settle before trial at a fraction of what he had been asking for. The invention that he leveraged off of? A very crude, electromechanical machine vision invention. His ultimate claims read on readers for bar code and other machine marking (such as are used for sorting good and bad ICs).
November 10, 2009, 4:19 pmBruce Hayden says:
Properly done, software claims fall under three of the four statutory classes: process, machine, and article of manufacture. The method implemented in the software is a process. A computer system containing the software is a machine (a programmed general purpose computer is a special purpose computer). And, a floppy disk (or CD/DVD) containing the software in a form executable by a computer processor is an article of manufacture.
November 10, 2009, 4:23 pmCDU says:
Software is just a set of instructions, it isn’t tied to any particular machine or physical object. It could be compiled for a different processor or operating system, translated into a different programming language, executed by hand, transformed into lambda calculus, etc.
November 10, 2009, 4:33 pmSoronel Haetir says:
Bruce,
Sorry, gotta agree with CDU, software as such is not a machine.
November 10, 2009, 4:53 pmBruce Hayden says:
Which is why it is pretty much unpatentable in that format.
November 10, 2009, 6:00 pmBruce Hayden says:
Of course, software is not a machine. The question is whether it being loaded into a computer converts that computer to a specific purpose machine.
November 10, 2009, 6:02 pmpc says:
Interesting question. Would that depend on how close to the hardware the software gets? I’m thinking of the lawsuit by Paltalk and their recent lawsuit against some of the biggest names in the MMO industry (they settled with Microsoft in 2006). I’m not familiar with the law, but shouldn’t IP monopolies “promote the Progress of Science and useful Arts?”
If the patent is broad enough to cover MMO servers and clients, how would installing the World of Warcraft client on my PC make it a specific purpose machine?
November 10, 2009, 6:22 pmSteve2 says:
What about something akin to the “essential nexus” test from land use regulation law? “Essence of function”, perhaps, to test if the link to a machine/process is essential to the totality of the claims, or if it’s just an “on the Internet!” tacked on…
November 10, 2009, 6:30 pmDale B. Halling says:
The oral arguments show that the Supreme Court is incapable of comprehending the issues related to patents. First there is no logical definition of a business method patents. All patents relate to how a business intends to operate. Second, software patents are clearly directed to machine. As any electrical engineer knows, solutions to problems implemented in software can also be realized in hardware, i.e., electronic circuits. The main reason for choosing a software solution is the ease in implementing changes, the main reason for choosing a hardware solution is speed of processing. Therefore, a time-critical solution is more likely to be implemented in hardware, while a solution that requires the ability to add features easily will be implemented in software. As a result, to be intellectually consistent, those people against software patents also have to be against patents for electronic circuits. Unless the Supreme Court is going to hold that electronic circuits are not statutory material for patents under 35 USC § 101, their decision should not affect software patents. For more information on the problems of Bilski see http://hallingblog.com/2009/06/08/bilski-software-patents-and-business-method-patents/
November 10, 2009, 8:09 pmreadery says:
Kuzbad: Can we see an example of what software patents OUGHT to be like?
I think Microsoft Windows — a specific operating system for a specific kind of computer — ought to be patentable (although not necessarily through thousands of individual tiny-claim patents).
I would tend to agree that Congress, not the Supreme Court, ought to resolve this mess by determining what sort of intellectual property rights ought to apply to software and developing a set of rules and standards to provide guidance to the courts.
November 10, 2009, 8:44 pmpc says:
And a really non-time critical feature would be implemented by hand. So we go back to algorithms. Knowing how to calculate the eigenvector centrality of something is not novel. Applying that calculation to x is?
November 10, 2009, 8:54 pmBruce Hayden says:
Actually, it is a bit more complex than this. When you are dealing with some electronics, and in particular, working on the boundary between hardware and software, the line of what is implemented in what type of hardware and software, when, often changes over time.
So, let us assume a black box that provides novel and non-obvious (for our discussions here) functionality. The functionality may, and often does, start out as, possibly high level, code executed by a computer processor. Then, the code may be implemented on an embedded processor. At some point, it may be modeled as a software expression of circuitry (e.g. Verilog), which may in turn be executed almost as if it were a software program. Maybe then, it moves into an FPGA where much of the programming involves routing, with one and zero bits turning on and off paths through the circuitry. Then, maybe a custom IC is fabbed from that Verilog model. The decision of how and when to implement the invention is an engineering decision based on stability and volume.
So, does it really make sense to have a system where patentability depends on how an invention is implemented, and where that patentability may change dramatically over the life of a product? Or where someone can bypass infringement by implementing something in software, where the patent was limited to hardware?
And lest you think that the dynamic only goes one way, several of the old mainframe companies discovered that they could no longer afford to develop custom ICs for their CISC processors. What to do? The answer was to emulate these legacy processors on IA64 processors. And, for the most part, their customers cannot distinguish between when they had processors on custom ICs in the past, or when that processor is emulated in software. All they care about is that their code runs, either way. So, should all those patents on their CISC architecture processors now be invalid because they are implemented in software instead of hardware? I don’t think so, but, then again, I wrote some of those patents (as well as some of the emulation patents).
But that isn’t what most software patents cover. Most of them are much more routine, and really don’t involves any math about maybe a 6th grade level.
November 10, 2009, 9:24 pmKuzbad says:
Bruce Hayden:
I got some other interesting answers, but haven’t heard from you. You seem to have experience filing patents (?) — do you have an example of a good software patent? Perhaps something you’ve filed or run into over the years?
With regards to some of the other responses (e.g. RSA and Reed-Solomon encoding), I do agree that there needs to be some kind of protection–I think these are good examples. However, what about CDU’s example of the solitaire/cryptonomicon encryption algorithm? Something can be patented when executed on computer but anybody can do it by hand? Or with a calculator? I don’t know how to draw a line here.
Readery: In repsonse to “Microsoft Windows … ought to be patentable.” What does this do for interoperably? Would open source projects such as Samba (http://www.samba.org/) be forced into some sort of patent licensing scheme merely to be able to “talk” to Windows networks? Talk about destroying innovation — the established companies could just patent their products making it completely impossible for competitors to do anything.
November 11, 2009, 12:29 amEinhverfr says:
Kazbad:
I agree. Interoperability ought to be an absolute safe-haven from software patent claims.
Of course, that more or less defeats the purpose of software patents in the general market (though not, perhaps, in certain highly technical markets).
November 11, 2009, 12:49 amSoronel Haetir says:
I honestly don’t understand the idea of patenting an OS as such. What exactly would the claims and disclosure look like?
At least claims like RSA mirror traditional patents in that respect.
I do have problems however in distinguishing between RSA and Newton’s method. How are we to draw that line for algorithm purposes?
Or perhaps the claim should have attempted to be on asymmetric encryption itself, with RSA as just one possible implementation? (Ignoring the potential that such encryption was already known. I’ve seen claims that Diffie-Hellman was prior art.) Such a claim would mirror previous patents even more.
November 11, 2009, 12:42 pmJoe Kowalski says:
95% of the time when a piece of hardware is being “emulated” the whole chip isn’t actually being emulated. The front end instruction set (the buttons and knobs on the chip) is and then on the back end the machine code is dynamically re-compiled for host system. Most patents on IC’s are all on the back end, and aren’t even implemented when virtualized or emulated. Did Parallels obtain an x86 license from Intel when it was making its PC emulation software on old ppc macs?
November 11, 2009, 2:30 pmDavid Hilbert says:
One interesting feature of this thread is how nicely it exemplifies the central thesis of Orin’s paper: that computer technology does not fit neatly into the preexisting frameworks for patentability and that attempts to make it fit result either in almost everything being patentable or almost nothing being patentable. Those seem to be the positions maintained in the discussion here and no ideas have been offered that promise to offer a way out of this unsatisfactory dilemma.
November 11, 2009, 3:09 pmRiskable says:
Since all computer software is essentially a list of instructions why should they be patentable? If you can’t patent a recipe you shouldn’t be able to patent software.
More importantly, software developers shouldn’t be required to perform a patent search before writing a program.
Also, one of the greatest aspects of software is that there can be many applications available that perform the same task. This means that the consumer can choose from a multitude of options and it also means that any software developer can make a better version of an existing application. This is the reason why the computer software industry (and the Internet in general) are the fastest-innovating industry of all time.
-Riskable
November 11, 2009, 4:14 pmRoger Zimmerman says:
As to what kinds of software ought to be patentable, I believe you pass over any conceivable hurdle when the claim includes a limitation involving transformation of matter, where the material transformation is essential to the commercial purpose of the process, not just its implementation.
Hence a (novel, non-obvious) algorithm which changes the duration of a digital audio signal of the human voice, without changing the pitch (aka “constant pitch playback speed modification), becomes clearly patentable when the claim includes “wherein the so-modified digital signal is converted to acoustic waves by a transducer for playback to a listener …” (or something like that).
So, I am advocating in favor of algorithms that result in GUI impacts (provided the GUI is part of the purpose, which it usually is), but not the “material transformation” involved in the hardware circuits that execute the code, since that’s just implementation, not purpose.
IANAL, but I have written some software patents which I’m proud of (they really are novel), so I’d be interested to hear what lawyers have to say about this.
November 11, 2009, 7:32 pmnick says:
Bruce, at least three of the justices know about and don’t like your method of adding on a “computer” element as a Christmas tree ornament to pure software patents:
JUSTICE STEVENS: I don’t understand how that can be a patent on a machine if the only thing novel is the process that the machine is using. Isn’t — isn’t the question — really, the question there was whether the new process was patentable.
(p. 42)
JUSTICE KENNEDY: That’s — that’s a problem I have.
(p. 44)
JUSTICE BREYER: But then all we do is every example that I just gave, that I thought were examples that certainly would not be patented, you simply patent them. All you do is just have a set of instructions for saying how to set a computer to do it. Anyone can do that. Now, it’s a machine. So all the business patents are all right back in…all you do is you get somebody who knows computers, and you turn every business patent into a setting of switches on the machine because there are no businesses that don’t use those machines.
(p. 46)
This argument is the same one I made in this paper that would invalidate business method and software-only patents regardless of whether “computer” or “CPU” or “memory” or similar was added on as a Christmas tree ornament:
“Elemental Subject Matter”
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=916963
“A long line of United States Supreme Court cases have followed the methodology of Neilson v. Harford in requiring novelty, and also often non-obviousness, to come entirely from the parts of the claim that are statutory under what is now Section 101 of the 1952 Patent Act. This paper traces the development of subject matter law in the area of software patents, where loss of the Neilson test led to contradictory holdings and de facto legitimization of supposedly nonstatutory subject matter. It proposes to restore stability and substance to subject matter law with a return to the Neilson doctrine, in a modern form consistent with the 1952 Patent Act. ”
I suspect Bilski can be decided without deciding this Christmas-ornament issue, but if or when the philosophy of at least these three justices is implemented, even your cleverly drafted software patents will be toast.
If you want software to be patentable, you should get Congress to pass legislation to make it patentable. What the Federal Circuit did in allowing software patents that use a machine element only as a fig-leaf, as you have cleverly done, grossly violated a long line of Supreme Court precedent in the way that Stevens, Kennedy, and Breyer were complaining about here.
November 12, 2009, 12:27 amRiskable says:
There’s something else I’d like to mention that hasn’t been considered in the comments so far: Software is free speech.
Since software is nothing but source code and perhaps some graphical/sound elements (icons, sounds, images, and whatnot) it could be considered that the source code is speech. Because it is speech it is protected under the 1st amendment. Thus; any enforcement of a software patent violation would be a violation of the 1st amendment.
This isn’t the same kind of limits on speech that copyright entails since two implementations of the same patented process could use completely different source code and even written in completely different languages for completely different platforms/devices. So essentially what this means is that by patenting a specific aspect of software you’re effectively barring anyone from communicating it without your permission or licensing.
-Riskable
November 12, 2009, 11:29 am“The Supreme Court ruled that political contributions are to be considered free speech. Apparently the more money you have the more free speech you get!”
Aaron Denney says:
Bruce Hayden wrote:
Then you have a lot of balls calling others technologically illiterate. Algorithms are mathematical objects.
November 14, 2009, 5:58 pm