Federal Circuit case renders many broadly written software patents invalid(patentlyo.com)
patentlyo.com
Federal Circuit case renders many broadly written software patents invalid
http://www.patentlyo.com/patent/2011/08/if-the-software-method-is-not-patentable-then-neither-is-the-computer-readable-medium.html
10 comments
It's very weird to see human capability factor into it. I mean, a person very well COULD compare two images pixel by pixel, it just takes a rather long time. I'm pretty sure I have done things like that on occasion for very small images, in fact.
Absolutely. A method shouldn't be patentable just because it's too boring for a human to perform a mindless computation over and over again. Multiply a 3x3 matrix is simple for me to do by hand; multiplying a 1000x1000 matrix is no different in process but is much more time consuming; should the latter be patentable? (In my mind the answer is clearly no.)
I can see where there might be some concern that you could claim anything that could be done on a computer could also be done more slowly by a human with a pencil and paper. Frankly, I don't have much of a problem with this: automating simple tasks doesn't seem like an invention, it sounds like a land-grab. Certainly there are nontrivial tasks that a computer can perform but which cannot be done well enough or fast enough by a person, e.g., closing a control loop in software (delay leads to instability; if you can't perform a computation fast enough, you cannot perform the control function, thus, certain such tasks could not be performed by a human with pencil and paper).
It's arguable whether even something like this ("implement an equation... but really fast!") really ought to be patentable, and while I'm a named inventor on at least a few patents in this area, I'm doubtful. Of course, my employer has no such qualms, and is happy to hold said patents.
I can see where there might be some concern that you could claim anything that could be done on a computer could also be done more slowly by a human with a pencil and paper. Frankly, I don't have much of a problem with this: automating simple tasks doesn't seem like an invention, it sounds like a land-grab. Certainly there are nontrivial tasks that a computer can perform but which cannot be done well enough or fast enough by a person, e.g., closing a control loop in software (delay leads to instability; if you can't perform a computation fast enough, you cannot perform the control function, thus, certain such tasks could not be performed by a human with pencil and paper).
It's arguable whether even something like this ("implement an equation... but really fast!") really ought to be patentable, and while I'm a named inventor on at least a few patents in this area, I'm doubtful. Of course, my employer has no such qualms, and is happy to hold said patents.
> closing a control loop in software (delay leads to instability; if you can't perform a computation fast enough, you cannot perform the control function, thus, certain such tasks could not be performed by a human with pencil and paper).
I agree with your point but I find a certain irony in the fact that a pilot is clearly closing a highly delay-sensitive control loop without doing any math whatsoever.
I agree with your point but I find a certain irony in the fact that a pilot is clearly closing a highly delay-sensitive control loop without doing any math whatsoever.
It's not delay sensitive on the same order of magnitude as something like a dc/dc converter. The relevant time constants in the pilot->controls->control surfaces->attitude->pilot loop are measured in fractional seconds (and when they're not, e.g., in fly-by-wire designs, the loops aren't closed by a person).
The fastest relevant time constant for the control loop of a switching power converter with meager 1 kHz closed-loop bandwidth is measured in fractional milliseconds (you care about poles up to, say, 10x your crossover frequency). For a pretty run-of-the-mill analog circuit like an op-amp, the relevant time constants are often measured in nanoseconds. Heck, even something slow like an audio amplifier has relevant time constants in the tens of microsecond range.
Also, don't underestimate the amount of subconscious math you're doing even for a simple task like walking. Your body's subconscious understanding of physics is pretty damn impressive. The problem is that our brains are pretty specific in the types of problems they're adapted to solving. Riding a bike, sure. Induction motor controller, probably not so much :)
The fastest relevant time constant for the control loop of a switching power converter with meager 1 kHz closed-loop bandwidth is measured in fractional milliseconds (you care about poles up to, say, 10x your crossover frequency). For a pretty run-of-the-mill analog circuit like an op-amp, the relevant time constants are often measured in nanoseconds. Heck, even something slow like an audio amplifier has relevant time constants in the tens of microsecond range.
Also, don't underestimate the amount of subconscious math you're doing even for a simple task like walking. Your body's subconscious understanding of physics is pretty damn impressive. The problem is that our brains are pretty specific in the types of problems they're adapted to solving. Riding a bike, sure. Induction motor controller, probably not so much :)
The problem is that our brains are pretty specific in the types of problems they're adapted to solving. Riding a bike, sure. Induction motor controller, probably not so much :)
I suspect that it would be possible to map most control problems onto a problem that the human mind can solve, either consciously or instinctively. I don't think the speed of the loop should be a deciding factor at all, at least when a computer is doing the control. For example, you could map maintaining power supply stability to standing upright just by slowing the problem down and converting the input variables into axes of motion.
To sum up, bumping up the clock speed on something a human could do (even if it took them a thousand years) seems like a very poor criterion for patentability, and I hope the issue is revisited and clarified.
I suspect that it would be possible to map most control problems onto a problem that the human mind can solve, either consciously or instinctively. I don't think the speed of the loop should be a deciding factor at all, at least when a computer is doing the control. For example, you could map maintaining power supply stability to standing upright just by slowing the problem down and converting the input variables into axes of motion.
To sum up, bumping up the clock speed on something a human could do (even if it took them a thousand years) seems like a very poor criterion for patentability, and I hope the issue is revisited and clarified.
The point parent was making is you can't slow the induction controller problem down because it would yield a completely different output due to the instability.
Slowing down the sort of pen and paper calculation the court ruled on does not change the result, it simply yields the same result more slowly.
I still agree this is probably not a sufficient criterion for patentability though. There are plenty open loop systems that intuitively seem like they should be patentable... for example video encoding methods.
Slowing down the sort of pen and paper calculation the court ruled on does not change the result, it simply yields the same result more slowly.
I still agree this is probably not a sufficient criterion for patentability though. There are plenty open loop systems that intuitively seem like they should be patentable... for example video encoding methods.
"The problem is that our brains are pretty specific in the types of problems they're adapted to solving"
Brain in fact can adapt it's physic coprocesor to solve many problems it was not originaly intended to solve - see extreme sports, arcade games, steering vehicles, playing live music (and imrpovising it).
I think we could perform many task currently thought to be too computation intesive for human, if there was some clever interface, allowing us to use our coprocessor to solve it.
Like somehow translating problem of controlling induction motor into problem of keeping balance on the bicycle :)
Brain in fact can adapt it's physic coprocesor to solve many problems it was not originaly intended to solve - see extreme sports, arcade games, steering vehicles, playing live music (and imrpovising it).
I think we could perform many task currently thought to be too computation intesive for human, if there was some clever interface, allowing us to use our coprocessor to solve it.
Like somehow translating problem of controlling induction motor into problem of keeping balance on the bicycle :)
I was going to say the same thing kwantam did about piloting: airplanes generally fly themselves. In the vast majority of situations, all the pilot (ideally) does is add slow and small perturbations. Airplanes without inherent stability, like some fighter jets, are without exception flown by computers, with the pilot providing control inputs to the loop.
I had a professor who was a control systems engineer. They had a helicopter simulation hooked up where you could attempt to fly it both with and without the control system. I don't think I was able to move it more than a few feet without having it flip over when I wasn't using the control system.
And if you want to bring math into it, he was also damn good at solving the matrices filled with hairy PDEs that described the whole system.
And if you want to bring math into it, he was also damn good at solving the matrices filled with hairy PDEs that described the whole system.
> without doing any math whatsoever.
The pilot is doing a lot of calculations. It's just not representing sensory inputs and muscular outputs as numbers.
The pilot is doing a lot of calculations. It's just not representing sensory inputs and muscular outputs as numbers.
> A method shouldn't be patentable just because it's too boring for a human to perform a mindless computation over and over again.
That's not the effect here, it doesn't ensure patentability. It's excluding the low hanging fruit of tasks that can obviously be done by a human.
Maybe we want to exclude the large class of obvious and simple methods from patentability, but simplicity is hard to decide in a general way for any given algorithm. With this test, we can quickly make that decision for a special subset of those obvious and simple operations, the ones that are so obvious and simple that they can be done by hand.
I think it's a tiny incremental change, maybe that deserves criticism: it doesn't go nearly far enough. But hey, the law grinds fine, and exceedingly slow.
That's not the effect here, it doesn't ensure patentability. It's excluding the low hanging fruit of tasks that can obviously be done by a human.
Maybe we want to exclude the large class of obvious and simple methods from patentability, but simplicity is hard to decide in a general way for any given algorithm. With this test, we can quickly make that decision for a special subset of those obvious and simple operations, the ones that are so obvious and simple that they can be done by hand.
I think it's a tiny incremental change, maybe that deserves criticism: it doesn't go nearly far enough. But hey, the law grinds fine, and exceedingly slow.
This issue is related to a similar issue in copyright – is the "sweat of your brow" enough to render a protected work? The classic example is the white pages.
* ... multiplying a 1000x1000 matrix is no different in process but is much more time consuming; should the latter be patentable?*
A naive algorithm for multiplying square matrices runs in O(N^4). A slightly less naive algorithm runs in O(N^3). There is an especially clever algorithm that runs in O(N^2.807).
If somebody discovers a practical algorithm that runs in O(N^2.1), should it be patentable? I say yes. No amount of grinding away with pencil and paper is equivalent to a clever divide and conquer algorithm.
A naive algorithm for multiplying square matrices runs in O(N^4). A slightly less naive algorithm runs in O(N^3). There is an especially clever algorithm that runs in O(N^2.807).
If somebody discovers a practical algorithm that runs in O(N^2.1), should it be patentable? I say yes. No amount of grinding away with pencil and paper is equivalent to a clever divide and conquer algorithm.
I'm not a lawyer, but I'm pretty sure Gottschalk v. Benson makes it clear that the algorithm itself is not patentable.
http://en.wikipedia.org/wiki/Gottschalk_v._Benson
EDIT: It occurs to me upon reflecting on my reply that you're making a statement unqualified by present legal precedent. In that case, I respectfully disagree. Patenting fundamental mathematical truths seems like a very bad idea to me, and I'm glad that nominally such things are not allowed (though of course practically it goes on all the time).
Perhaps another way to say this: the problem most people have with software patents is that it's more or less patenting little pieces of math. I think it's more or less well known how most "practitioners of the art" feel about this.
http://en.wikipedia.org/wiki/Gottschalk_v._Benson
EDIT: It occurs to me upon reflecting on my reply that you're making a statement unqualified by present legal precedent. In that case, I respectfully disagree. Patenting fundamental mathematical truths seems like a very bad idea to me, and I'm glad that nominally such things are not allowed (though of course practically it goes on all the time).
Perhaps another way to say this: the problem most people have with software patents is that it's more or less patenting little pieces of math. I think it's more or less well known how most "practitioners of the art" feel about this.
Sorry. By "patentable" I meant when embodied by a clearly-defined machine.
And anyway, why not patent algorithms in the abstract? There are an infinity of "fundamental mathematical truths", but only a few are spectacularly useful. If a given algorithm truly is obvious and trivial, then you can evade the patent by spending 30 seconds to find another obvious and trivial algorithm. (I note that most of the people complaining about the trivial obviousness of all software patents are not cranking out 50 algorithms a day like RSA or the fast Fourier transform. When they talk about software being obvious, they're talking about other people's software.)
And anyway, why not patent algorithms in the abstract? There are an infinity of "fundamental mathematical truths", but only a few are spectacularly useful. If a given algorithm truly is obvious and trivial, then you can evade the patent by spending 30 seconds to find another obvious and trivial algorithm. (I note that most of the people complaining about the trivial obviousness of all software patents are not cranking out 50 algorithms a day like RSA or the fast Fourier transform. When they talk about software being obvious, they're talking about other people's software.)
> And anyway, why not patent algorithms in the abstract?
Because the costs outweigh the benefits, unless you're a patent lawyer.
Software patents already create huge legal risks to businesses that did nothing wrong except come up with a simple idea that someone patented first, they're ridiculously expensive to enforce, and most of the money ends up driving more lawsuits rather than more research.
Because the costs outweigh the benefits, unless you're a patent lawyer.
Software patents already create huge legal risks to businesses that did nothing wrong except come up with a simple idea that someone patented first, they're ridiculously expensive to enforce, and most of the money ends up driving more lawsuits rather than more research.
So Carl Friedrich Gauss could have patented his FFT algorithm, since it would take 160 years for the next guys to come up with it on their own?
It's possible for an algorithm to be obvious and trivial, and also the only way to do it.
No amount of grinding away with pencil and paper is equivalent to a clever divide and conquer algorithm.
Unless that grinding is to reproduce the algorithm's steps. Which is a rather important issue in this case (that and people object to the idea of having patent law restrict use of an organized thought process).
Unless that grinding is to reproduce the algorithm's steps. Which is a rather important issue in this case (that and people object to the idea of having patent law restrict use of an organized thought process).
A bit offtopic -- what O(n^4) naive algorithm have you in mind? I cannot really think of any -- just implementing the definition gives you O(n^3).
Oops. Thanks for the correction.
Agreed. Even in the case at hand, it seems like the patent holder could argue that a human couldn't perform this task at Web scale.
Yeah, this is patently (ha) absurd. I can't think of an algorithm off the top of my head that isn't feasible to do manually for small values of n.
The question is, will doing them for small values of n solve the problem? Page rank may be more or less useless with a small data set.
It would provide the correct result of the algorithm which should be enough. Useful is outside the scope of patents (AIUI, IANAL).
Actually, utility is one of the core requirements for a patent in the U.S. Whether or not PageRank on a tiny data set is still "useful" would be a ? for the patent office, but if it were deemed not useful, that would be grounds for denial.
I think whole point of patents is they are a registered solution to a problem. So I think usefulness is within their scope. But IANAL either.
It's not usefulness as we know it: http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sec...
The problem I have with this is the following.
a) There is no software that we cannot put into hardware - literally! Software and hardware are interchangeable. So the oft cited distinction between s/w and h/w is, to say the least, somewhat arbitrary.
b) "If a method can be performed by the human mind alone, or with paper and pencil..." This test sounds as if it might make sense but runs into real problems once you bear in mind issues of computability. E.g. is it therefore patentable if although it could in principle be performed by the human mind with a paper and pencil the degree of computation required is so enormous that such a method is completely impractical. e.g. real time graphics processing. I suspect that the class of such methods is extremely large.
I don't see the problem with A. If you take the software, which can't be patented, and put it into hardware, you can patent the hardware. This seems perfectly reasonable to me, and it holds pretty closely to the original idea of patents: A specialized device that performs an action is an invention, but the act being performed is not an invention. I also don't think that software that emulates the hardware is not in violation of the hardware patent.
I think B is a much bigger problem. Any computer program could be performed with pencil and paper, by getting a big file folder to simulate RAM, indexing it by numbers, and performing assembly instructions by hand with post-it notes as registers. I think the major exceptions are interfacing with other components, including UI systems and networking, and anything with a real-time component.
I think B is a much bigger problem. Any computer program could be performed with pencil and paper, by getting a big file folder to simulate RAM, indexing it by numbers, and performing assembly instructions by hand with post-it notes as registers. I think the major exceptions are interfacing with other components, including UI systems and networking, and anything with a real-time component.
> Any computer program could be performed with pencil and paper, by getting a big file folder to simulate RAM, indexing it by numbers, and performing assembly instructions by hand with post-it notes as registers
Indeed. But surely if the purpose of the algorithm is something like "find whether this combination exists in a set of millions / billions of records within a tractable time" then it cannot possibly be done by hand in a tractable/practical way -- and it will fail this test?
Indeed. But surely if the purpose of the algorithm is something like "find whether this combination exists in a set of millions / billions of records within a tractable time" then it cannot possibly be done by hand in a tractable/practical way -- and it will fail this test?
It's still just an algo. It's still just math.
Yes but when time-sensative information relies on speedy calculations or approach then there is inherent usefulness to the invention. A competing firm may choose to solve the issue by paper in order to avoid lawsuits for stealing the patentable invention but its impractical.
So an otherwise fundamentally unpatentable algorithm could become patentable "when used in a time-sensitive application"?
Or, an otherwise fundamentally unpatentable algorithm with today's core counts could become patentable five to ten years from now when pocket computing power is measured teraflops?
Any computer program could be performed with pencil and paper
This ruling requires that doing it my hand or purely mentally be achievable as a practical matter.
It is not practical for me to draw frame by frame the contents of an AVI file by hand, even if it were theoretically possible, etc. While this ruling does leave judgment calls and grey areas, there are also a lot of cases where it can be decided very directly whether or not it is practical to do the operation by hand.
This ruling requires that doing it my hand or purely mentally be achievable as a practical matter.
It is not practical for me to draw frame by frame the contents of an AVI file by hand, even if it were theoretically possible, etc. While this ruling does leave judgment calls and grey areas, there are also a lot of cases where it can be decided very directly whether or not it is practical to do the operation by hand.
Not having looked at the avi container format why would you say it's impractical? Certainly a 'normal' sized avi would be impractical but what about a 10x10 grid of pixels? The algorithm is unchanged, why should the size of N matter?
It seems to me like basing patentability on time constraints actually imposes a distinction between hardware and software, regardless of how you feel about their logical interchangeability. For example, an algorithm for real time graphics processing would be just as impractical to run on ENIAC as it would be to do with pencil and paper, but there's no reason you couldn't port the software. So if the validity of the patent is based on its usefulness in a real-time application, it would have to be something like "running algorithm x using computer system y to achieve the desired result in z length of time." Including both the software and hardware used would be the only way to ensure that the time constraint was actually met. I think it's obvious that very few (if any) software patents could meet that criterion.
ianal, but would it not stand to reason that if the algorithmic method exists to incorporate/address computability specifically; then by implication the "human mind/pen&paper" criteria could only pass if performable under the same constraint?
For example, if the purpose of the method specifically relates to real time graphics processing (ie the real time constraint is a fundamental aspect of the method) -- then the expectation would be that the pen&paper test would have to be able to achieve the same constraint (ie calculable in real time) for it to invalidate the claim of the method?
For example, if the purpose of the method specifically relates to real time graphics processing (ie the real time constraint is a fundamental aspect of the method) -- then the expectation would be that the pen&paper test would have to be able to achieve the same constraint (ie calculable in real time) for it to invalidate the claim of the method?
I guess it depends on the granularity of the algorithm?
Imagine a transformation mapping one set of points onto another. If each individual transformation can be calculated with pen&paper, I'd hope the process is not patentable, even if running it a million times in a loop is what makes it useful.
Imagine a transformation mapping one set of points onto another. If each individual transformation can be calculated with pen&paper, I'd hope the process is not patentable, even if running it a million times in a loop is what makes it useful.
There is no software that we cannot put into hardware - literally!
Indeed, as I have often argued too. And even "virtual" software can readily be implemented in human scale electromechanical devices, as with the relay-based computers where you can watch the memory bits change and even reach in and flip them with your fingers.
"If a method can be performed by the human mind alone, or with paper and pencil..."
However the issue with this patent is that it was too broadly written. The claims apply to all possible implementations, including pencil and paper methods, not just implementation with a logic machine. That is unpatentable.
Indeed, as I have often argued too. And even "virtual" software can readily be implemented in human scale electromechanical devices, as with the relay-based computers where you can watch the memory bits change and even reach in and flip them with your fingers.
"If a method can be performed by the human mind alone, or with paper and pencil..."
However the issue with this patent is that it was too broadly written. The claims apply to all possible implementations, including pencil and paper methods, not just implementation with a logic machine. That is unpatentable.
I think it is a positive step forward and may be useful for the folks who are litigating against some of the more egregious software patents.
That said, I don't believe '1-click ordering' would survive this test, and if not that would be a good thing in my opinion.
That said, I don't believe '1-click ordering' would survive this test, and if not that would be a good thing in my opinion.
If this is upheld, I see all software patents being eventually voided. "as a practical matter" can be attacked by using induction. Do an image transformation on a 10x10 image. Do it again on 11x11. Argue that the patent is invalid by induction. Perhaps someone actually has to spend a week the first time on a large image to "prove" induction.
Real time doesnt exist. It means accomplishing a task within a specified interval. If you can do a task in 1 hour and someone else can do it in 30 minutes. It seems to me that it is then possible to argue that doing the same thing in a microsecond on a computer is not patentable.
Perhaps the judges will need a little focused high school math and a lesson on Turing machines.
Real time doesnt exist. It means accomplishing a task within a specified interval. If you can do a task in 1 hour and someone else can do it in 30 minutes. It seems to me that it is then possible to argue that doing the same thing in a microsecond on a computer is not patentable.
Perhaps the judges will need a little focused high school math and a lesson on Turing machines.
Is there any precedent for courts recognizing mathematical or logical proofs? I was under the impression that courts, by their design, rely entirely on appeals to authority in the form of expert testimony.
For that matter, would it be possible to design a court system based on a fully modern understanding of logic, proof, induction, etc., rather than the seemingly ad hoc system we have now?
For that matter, would it be possible to design a court system based on a fully modern understanding of logic, proof, induction, etc., rather than the seemingly ad hoc system we have now?
For better or worse, courts are pretty immune to this particular form of induction. That's why you can copyright the sequential bits of a movie, but not the number "0110".
> Following precedent set by Benson and Abele, the court here held that an unpatentable mental process remains unpatentable even when restricted to use on a computer.
Really, really hoping this logic survives and becomes widely applied.
Really, really hoping this logic survives and becomes widely applied.
I can imagine certain individuals making a lot of money as expert witnesses, demonstrating the execution of patented software processes completely mentally.
Wouldn't you think that "mentally" includes the use of pencil and paper? Given enough of that and time I can simulate any classical computer.
In a sense, yes. But it might simply be that you can't patent anything that a normal person (say, the judge) could easily do with a pencil and paper.
So things like "See if the guest's name is on the guestlist" might be found unpatentable, but complicated sequences of instructions (which you have specifically laid out) for which you really do need a computer (or some other machine) might still be patentable.
I'm not a lawyer, though.
So things like "See if the guest's name is on the guestlist" might be found unpatentable, but complicated sequences of instructions (which you have specifically laid out) for which you really do need a computer (or some other machine) might still be patentable.
I'm not a lawyer, though.
If you're performing a computation that cannot be done with pencil and paper, a computer cannot do that computing.
As another post is pointing out, there is a "practicality" clause. If you can use a computer to do something that would otherwise take days to compute, it may still be patentable.
It's impractical to multiply two million-digit numbers by hand, but elementary schoolkids know the algorithm to do it. Does that imply that using a computer to multiply numbers of sufficient size would be patentable?
How about a particularly efficient multiplication algorithm that can be demonstrated by hand?
How about a linear problem optimization algorithm? http://en.wikipedia.org/wiki/Karmarkar%27s_algorithm#Patent_...
How about a network optimization problem? http://www.google.com/search?q=network+optimization+patent
The whole idea of patents in a post-industrial economy is a farce.
How about a particularly efficient multiplication algorithm that can be demonstrated by hand?
How about a linear problem optimization algorithm? http://en.wikipedia.org/wiki/Karmarkar%27s_algorithm#Patent_...
How about a network optimization problem? http://www.google.com/search?q=network+optimization+patent
The whole idea of patents in a post-industrial economy is a farce.
Well, everything scales based on size. Given a small input, the algo is more than likely still doable by hand.
It does include pencil and paper:
The Court noted that the calculations, while “primarily useful for computerized [applications],” could still “be made [using a] pencil and paper.”
The Court noted that the calculations, while “primarily useful for computerized [applications],” could still “be made [using a] pencil and paper.”
"CyberSource's patented invention is simple: when validating online credit card purchases, use IP address information (such as IP addresses) as a check against fraud. Thus, the patented method might raise a red flag if someone attempts to make a large internet purchase through an IP address that had previously been used for a fraudulent transaction."
IANAL and this is not legal advice, but the guys (probably) that tried to patent this should go f* themselves.
IANAL and this is not legal advice, but the guys (probably) that tried to patent this should go f* themselves.
Rather than do a drive-by downvote, I'm going to say that while I may share your sentiment to an extent, it has been my experience that HN usually prefers more substantive comments.
Patents are totally beyond me.
Supposedly there's a concept of "non-obviousness" but every patent that is disputed is strikingly obvious to a "person of ordinary skill in the art."
On a panel of 5 competent engineers, asked "How might we go about identifying potential credit card fraud on the Internet?" I suspect all 5 would independently bring up the idea of storing customer IPs and comparing that to IPs that have used that credit card in the past.
I can't help but feel like patent law is just a way for lawyers to extract money from people actually trying to make things.
Supposedly there's a concept of "non-obviousness" but every patent that is disputed is strikingly obvious to a "person of ordinary skill in the art."
On a panel of 5 competent engineers, asked "How might we go about identifying potential credit card fraud on the Internet?" I suspect all 5 would independently bring up the idea of storing customer IPs and comparing that to IPs that have used that credit card in the past.
I can't help but feel like patent law is just a way for lawyers to extract money from people actually trying to make things.
Title is slightly misleading. From the article, it sounds like they're just applying the usual standards for software patents to Beauregard claims. If this is the first time that's happened, that's pretty interesting... but it seems to me to be clearly the right result, and I didn't realize there was any serious debate about that question.
> Here, the court repeated its stance that mere data gathering steps such as "obtaining information" cannot be sufficient to "make an otherwise nonstatutory claim statutory."
It's just poor drafting. If they'd said "do all this stuff to determine if the credit card is valid" and added "if is valid, then execute the internet transaction, otherwise deny it" as part of the claim, then it would not merely be providing information - and could not be done with paper and pencil alone. You need to make a change in the world, i.e. execute the transaction. Usually, a patent would have later "dependent" claims, that further restricted an initial overly broad claim, but apparently they didn't here.
I get the impression that the court is being a bit pedantic, as it's clear what was meant; however, it is true that pure information can be used in many ways, not necessarily restricted to execute/deny.
It's just poor drafting. If they'd said "do all this stuff to determine if the credit card is valid" and added "if is valid, then execute the internet transaction, otherwise deny it" as part of the claim, then it would not merely be providing information - and could not be done with paper and pencil alone. You need to make a change in the world, i.e. execute the transaction. Usually, a patent would have later "dependent" claims, that further restricted an initial overly broad claim, but apparently they didn't here.
I get the impression that the court is being a bit pedantic, as it's clear what was meant; however, it is true that pure information can be used in many ways, not necessarily restricted to execute/deny.
"(...) the court focused on prior case law holding that mental processes standing alone are not patentable." I hope judges will support those statements more and more. Really good news.
Judges have NO IDEA how to interpret patents. I would claim that EVERY MACHINE is reducable to a (software) simulation, and that every software simulation can be (in theory) executed by the human mind with paper and pencil. While you could argue that the claims in this case are obvious, I find the reasoning used here to be contrary to ANY patent being issued for any machine or process.
... and this is why logicians tend to make poor lawyers. It doesn't matter if an argument is logically sound; what matters is whether the argument is convincing, and saying "sure I can do this with pencil and paper... it will only take a hundred billion years" isn't going to convince anyone.
Simulating a steam engine in your head doesn't actually pump water out of coal mines. However, "simulating" checking an IP address against a list produces exactly the same thing as the claimed invention: information. If your patent produces information then you're pretty much fucked. And rightly so.
If checking the IP leads to a result, such as blocking the user, it could not be simulated with paper and pencil. e.g. Amazon's infamous one-click purchase patent could not be simulated with paper and pencil.
One nice quality of this test is it makes the patent less abstract, more concrete, and therefore less broadly applicable: one of the arguments for mathematical algorithms not be patentable is that they are too general, and a monopoly on them would block too much.
One nice quality of this test is it makes the patent less abstract, more concrete, and therefore less broadly applicable: one of the arguments for mathematical algorithms not be patentable is that they are too general, and a monopoly on them would block too much.
(IANAL. This is my opinion. Welcome to correct me.)
If checking the IP leads to a result, such as blocking the user
"blocking the user". What does that mean? It means not giving the user what they asked for. It is absolutely doable with pen and paper, because the "user" is being "blocked" from "information".
But even if that were not the case: suppose it where a physical door being locked or unlocked. Well done, you've just attempted to patent a fucking bouncer.
Basically you can patent inventive things. But if your patent can't stand on its own if the computer part is replaced with a human operator, then it wont stand.
Amazon's oneclick travesty is totally doable on pen and paper and I hope someone will have another go at it.
If checking the IP leads to a result, such as blocking the user
"blocking the user". What does that mean? It means not giving the user what they asked for. It is absolutely doable with pen and paper, because the "user" is being "blocked" from "information".
But even if that were not the case: suppose it where a physical door being locked or unlocked. Well done, you've just attempted to patent a fucking bouncer.
Basically you can patent inventive things. But if your patent can't stand on its own if the computer part is replaced with a human operator, then it wont stand.
Amazon's oneclick travesty is totally doable on pen and paper and I hope someone will have another go at it.
It has to also be inventive.
The above is just an extra hurdle to disqualify claims that only produce information.
BTW: you can't block a user with pen and paper. You can obtain information for your decision to block them, but pen and paper, in isolation, have no impact on the world. Even something like a signed contract, PO etc has no effect, unless it is used in part of a system. If this doesn't make sense to you, recall that we're talking about the claims in the patent: of course, you can use pen and paper to do many things, but in a patent, it's not enough to claim you can work out the information with pen and paper; you have to also claim what you will do with that information.
The above is just an extra hurdle to disqualify claims that only produce information.
BTW: you can't block a user with pen and paper. You can obtain information for your decision to block them, but pen and paper, in isolation, have no impact on the world. Even something like a signed contract, PO etc has no effect, unless it is used in part of a system. If this doesn't make sense to you, recall that we're talking about the claims in the patent: of course, you can use pen and paper to do many things, but in a patent, it's not enough to claim you can work out the information with pen and paper; you have to also claim what you will do with that information.
I would find your claim to be slightly outlandish. Even if we assume that you could simulate anything known to humankind with software, you would still need to invent a thing to properly simulate it.
I'm not claiming I could INVENT any machine with a software process. Only that one could take any patent granted for a machine, and build a total software simulation for the described machine. By the judges' logic in this ruling, the software simulation of the machine is unpatentable. But what's the difference if the machine is implemented with atoms instead of bits?
Good. Overreaching software patents and the patent trolls who file them are a cancer on the software industry.
Tl;dr: The three-judge appeals court panel affirmed a summary judgment of invalidity. The panel announced a pretty straightforward test as one "filter" that can rule out patentability for certain claims:
1. If a method can be performed by the human mind alone, or with paper and pencil, then it's an "abstract idea," and therefore unpatentable under Supreme Court precedent.
2. If as a practical matter [a] the method cannot be performed with paper and pencil [b], then it passes the filter described in 1 above [c].
3. If a method would be unpatentable under 1 above, then a claim to a storage device encoding computer instructions for performing the method is likewise unpatentable.
NOTES:
[a] In its discussion, the court distinguished a couple of prior cases where such non-paper-and-pencil methods had been held patentable. See pages 20-21 of the PDF. EDIT to respond to petegrif's comment below: One of the earlier methods that had been ruled patentable was "for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask ...." The CyberSource panel distinguished this precedent by saying that, as a practical matter, that earlier method could not be performed by the human mind or with paper and pencil; see page 21 of the PDF.
[b] An unanswered question: How exactly are ordinary people supposed to determine whether a method can or can't be performed with paper and pencil "as a practical matter"?
[c] Even if a method gets past the "paper and pencil" filter, there are still other filters to pass before it will be patentable---but once the Patent and Trademark Office has issued the patent, then a presumption of patentability applies.
COMMENT: This is an area where the net effect of the precedents is not entirely clear. It wouldn't surprise me if the court were to take this case en banc, namely to have all of the court's 12 judges rehear and redecide the case in an attempt to clarify the law. (An en banc opinion is generally regarded as carrying more precedential weight than an opinion by a three-judge panel.)