On October 30, 2008, the United States Court of Appeals for the Federal Circuit issued a landmark decision in In re Bilski. As those who read IPWatchdog.com regularly know, it is my belief that software should be patentable subject matter, and patenting software is not the same as patenting math. Notwithstanding, that there are a good number of software patents that should never have issued because what is disclosed is little more than an idea, which said in patent terms means the disclosures in many software patents are simply not enabling and the written description requirement is not satisfied. I do not believe there is any inherent evil in the patenting of innovations that incorporate software, or are software. Rather than have the patentability inquiry collapse into a single criteria, I would rather have software tested based on the familiar five-part patentability test, of which patentable subject matter is only one factor. There is no reason to have a rule of law that says software is so unique that it can never be patented. Before we rush to judgment and alter the patent laws why not try something radical, like actually enforcing the laws and rules? If the patentability requirements were actually enforced far less software would be patented, and there would be no reason for special interest tweaking of the patent laws to prevent an important avenue of innovation from ever developing to its fullest potential.
It was the Federal Circuit decision in Bilski that led me to ask why shouldn’t software be patentable, which led me to embark upon a history of software patents. In Part I of our History of Software Patents we reviewed the primary United States Supreme Court decisions — Gottschalk v. Benson and Diamond v. Diehr. In Gottschalk the Supreme Court basically ruled that software was not patentable, and then about a decade later reconsidered in Diehr. In Diehr the Supreme Court acknowledged that a computer program may receive patent protection, explaining that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program or digital computer.” As a result the lower courts were left to attempt to figure out how to reconcile these decisions and create an articulable test that could be implemented from case to case to ensure certainty and predictability. To this day certainty and predictability have been elusive in this area of law, although from time to time we have lived with a bit of certainty up until the rules change, as was the case in Bilski.
For some time after the Supreme Court decision in Diamond v. Diehr, the Court of Appeals for the Federal Circuit applied what was known as the Freeman-Walter-Abele test to determine whether a computer program is patentable subject matter pursuant to 35 USC 101. Rather than review the tortured history of how the Federal Circuit came to the Freeman-Walter-Abele test, lets assume its existence, at least for now. In 1992, the Federal Circuit in Arrhythmia Research Technology, Inc. v. Corazonix Corp.succinctly stated the Free-Walter-Abele test as follows:
It is first determined whether a mathematical algorithm is recited directly or indirectly in the claim. If so, it is next determined whether the claimed invention as a whole is no more than the algorithm itself; that is, whether the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process steps. Such claims are nonstatutory. However, when the mathematical algorithm is applied in one or more steps of an otherwise statutory process claim, or one or more elements of an otherwise statutory apparatus claim, the requirements of section 101 are met.
In the Arrhythmia case the invention in question was directed to the analysis of electrocardiographic signals in order to determine certain characteristics of heart function. In essence, the invention was a monitoring device. It had been discovered that 15% to 25% of heart attack victims are at high risk for ventricular tachycardia, which can be treated by the administration of drugs. Unfortunately, the drugs used have undesirable and dangerous side effects, which led the inventor to come up with a monitoring device capable of determining which heart attack victims were at the highest risk for ventricular tachycardia. By using the invention to monitor heart attack victims treatment could be provided to only those most at risk. Certain steps of the invention were described as conducted with the aid of a digital computer, and the patent set forth the mathematical formulae that were used to configure the computer (i.e., software).
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The Federal Circuit ultimately determined that the invention defined a combination of interrelated means for performing specified functions. The computer performed operations transforming a particular input signal to a different output signal that could be visually interpreted. The use of mathematical formulae to describe the electronic structure and operation did not make the invention unpatentable subject matter. The Federal Circuit then concluded that the “apparatus claims satisfy the criteria for statutory subject matter. They are directed to a specific apparatus of practical utility and specified application…”
For those who wonder why it is that I have such strong feelings about software being patentable subject matter I would refer you to the Arrhythmia case as exhibit A. Does the invention in question relate to software? Absolutely. In fact, the core of the invention is software. There is a machine involved that accepts input signals from the heart that is being monitored. These signals are then manipulated using software, which requires the use of mathematical formulae. The resulting, manipulated information is then displayed in wave form on a monitor and/or recorded on a chart. The resulting information, whether on a monitor or on a chart, is then interpreted and lives can be saved. I see absolutely no reason to prevent such useful, worthwhile and important innovations from receiving patent protection. It seems to me that if the patent system is intended to encourage innovation for the benefit of people then the patent laws should encourage and then reward this very type of invention.
The Freeman-Walter-Abele test, which was applied in the Arrhythmia case, did not have much more life. As decisions using the Freeman-Walter-Abele test started to explain, the test was far from certain and allowed for the judge, or panel of judges, employing the test to logically reach diametrically opposite decisions while intellectually staying true to the required framework. Thus, the test was clearly flawed. While seemingly objective, the application of the Freeman-Walter-Abele test was horribly subjective, which led to uncertainty and the inability to predict outcomes. In a legal system built on adhering to precedent such a reality was unacceptable and unworkable. Notwithstanding, given that some aspects of the Bilski decision appear to harken back to the Freeman-Walter-Abele test, we cannot simply ignore its part in the history of software patents, and may well need to become reacquainted with it in much greater detail in years to come.
Several years after Arrhythmia the Federal Circuit seemingly abandoned the Freeman-Walter-Abele test. Sitting en banc in In re Alappat. We will pick up our history of software patents in Part III with the Federal Circuit decision in Alappat.
CONTINUE READING —> The History of Software Patents III: In re Alappat
RETURN TO PART 1 —> The History of Software Patents
JUMP TO PART 4 —> The History of Software Patents IV: State Street Bank- - - - - - - - - -
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About the Author
Gene Quinn is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.