Today's Date: April 18, 2014 Search | Home | Contact | Services | Patent Attorney | Patent Search | Provisional Patent Application | Patent Application | Software Patent | Confidentiality Agreements

All In! Doubling Down on Erroneous Attacks on the Federal Circuit


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
Blog | Twitter | Facebook | LinkedIn
Posted: October 5, 2012 @ 1:52 pm
Tell A Friend!


On Sunday, September 30, 2012, Timothy Lee of Ars Technica wrote a terribly researched and demonstrably erroneous article attacking the Federal Circuit titled How a rogue appeals court wrecked the patent system. The article is a cheap shot, factually inaccurate and just plain embarrassing.  Lee concludes the Federal Circuit is at the heart of all problems in the patent system, which is, itself, simply not true.  Of course, conclusions are not evidence and if he could have backed up what he was saying with any kind of factual, true information then it would have been a matter of opinion.   Instead, he was wrong about pretty much everything he wrote.

I challenged Lee’s article on Wednesday, October 3, 2012, in an article titled Lies, Damn Lies and Media Hatred of Patents (and the CAFC). This prompted Lee to come out swinging again, this time on Forbes.com in an article titled The Federal Circuit, Not the Supreme Court, Legalized Software Patents. Instead of apologizing like he should have done for writing about something he clearly doesn’t understand AND for getting it miserably wrong, Lee doubled down. Well — sort of.

Lee did double down with his absurd and provably incorrect assertions regarding the patentability of software patents, but he also more or less sheepishly admitted that his reading of the relevant cases is not one that is widely accepted as correct by anyone other than himself. He wrote: “To be clear, plenty of people disagree with me about how Diehr should be interpreted.”

I finally agree with Lee about something.  Plenty of people do disagree with his interpretations. Those plenty of people who disagree with Lee do so for a very simple reason. Lee is wrong and it can be easily proved if you just read the relevant cases.

Proving Lee’s Software Assertions to be Wrong

Almost a decade after its decision in Gottschalk v. Benson, the Supreme Court in Diamond v. Diehr first recognized that a computer program may deserve patent protection. How can I say this with such authority even though it is in direct contradiction to what Lee has written? Because the Supreme Court explained that the issue they were deciding in Diehr was whether a process for curing synthetic rubber that incorporated a programmed digital computer is patentable subject matter.”  The Supreme Court set the table as follows:

We granted certiorari to determine whether a process for curing synthetic rubber which includes in several of its steps the use of a mathematical formula and a programmed digital computer is patentable subject matter under 35 U.S.C. 101.

This quote comes directly from the first paragraph of the Supreme Court’s decision, so it is abundantly clear that the decision reached by the Court addressed the question of patentability of a process that utilizes “a programmed digital computer.” In fact, it was uncontroverted that the patent claims in question “defined and sought protection of a computer program for operating a rubber-molding press.”  So when the Supreme Court ultimately determined that the claimed invention in question was patentable that necessarily meant that a process that incorporates a programmed digital computer was patentable.  Thus, the Supreme Court of the United States ruled in 1981 that a computer implemented processes (i.e., software) can be patented.

 

In finding this software patentable, the Supreme Court explained:

[A] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program or digital computer. . . . [A] process is not unpatentable simply because it contains a law of nature or a mathematical algorithm. It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. As Justice Stone explained four decades ago: “While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.

. . .

[The equation used in the claimed method] is not patentable in isolation, but when a process for curing rubber is devised which incorporates in it a more efficient solution of the equation, that process is at the very least not barred at the threshold by Section 101.

So Mr. Lee is simply wrong when he asserts that it was the Federal Circuit and not the Supreme Court that initially determined that software could be patented.  The Supreme Court authorized the patenting of software, and used Diehr as the means for explaining that not all computer implemented processes are unpatentable.

By Lee’s own admission it was not until 1989 that the Federal Circuit found software patentable. That is some 8 years AFTER the Supreme Court’s decision in Diehr.  So how could he assert that the Federal Circuit decision 8 years later actually came first?  He simply ignores what Diehr says and instead claims that Diehr can’t mean what it unequivocally states because the computer software industry didn’t start to take notice and get upset until the 1989 Federal Circuit ruling.  Lee actually offers this as proof:

I think one indication that my claim was basically right is the way the software industry reacted, or more precisely didn’t react, to the 1981 Diehr ruling. The legalization of software patents produced a backlash in the software industry. If the impetus for software patents came from the Supreme Court, we should have expected that backlash to start in the early 1980s. Instead, opposition started cropping up in the 1990s, shortly after the Federal Circuit decided a case called In Re Iwahashi in November 1989.

So, in other words, just completely ignore the issue presented as defined by the Supreme Court in Diehr, as well as the claims specifically at issue, the Patent Examiner’s determination and the ultimate holding of the Supreme Court.  Diehr couldn’t possibly mean what it actually says because the software industry didn’t notice it.  Talk about the most illogical, ridiculous, self-absorbed rationale you will ever hear.  It couldn’t have happened because the software industry didn’t notice and get upset.  The fact that such an asinine argument could even be thought up is a true testament to Lee’s aversion to reality.

Following Supreme Court Guidance is Hardly “Rogue”

It is quite clear from any fair and accurate reading of Diehr that the Supreme Court unequivocally stated this: The mere fact that an invention incoporates a computer program or digital computer does not make it unpatentable.  Said in the converse — an invention that incorporates a computer program or digital computer may be patentable.  Consequently, it is clear for all objective observers to see that the Diehr decision opened the door for the possibility that some computer programs were entitled to patent protection.

This then required the Federal Circuit to find patent claims on at least some computer programs to be patentable.  Thus, started the Federal Circuit’s attempts to define under what circumstances an invention that incorporates a computer program or digital computer is patentable. So not only is Lee incorrect to say that the Federal Circuit is a rogue court, but what Lee uses as his proof that they are a rogue court is conclusively demonstrative of exactly the opposite. The Federal Circuit was doing exactly what the Supreme Court demanded.

Yet Another Reason Lee is Incorrect

Diehr aside, Lee is incorrect for yet another reason.  In his Forbes.com article, for reasons that are unclear, he chose not to address my second rationale for why the Supreme Court has authorized software patents.

In 2010, the United States Supreme Court AGAIN determined that software could be patented. This time in the much anticipated case of Bilski v. Kappos.

Justice Kennedy wrote the majority opinion in Bilski.  Unfortunately, the part that dealt with software was not joined by Justice Scalia, so only 4 Justices signed on to this part of the opinion, which requires a two-step analysis. In the “software section” of the opinion Kennedy characterized the holding in the Diehr case as follows: “a procedure for molding rubber that included a computer program is within patentable subject matter.”  Kennedy also specifically stated that computer programs are not always unpatentable, see slip. op. at pg. 8, which logically necessarily means that some software is patentable.  Therefore, Justices Kennedy, Thomas, Alito and Roberts all agree that software can be patented.

But what about the other Justices?  This brings us to footnote 40 of the Stevens dissent.  Justice Stevens was joined by Justices Breyer, Ginsberg and Sotomayor in his dissent.  The Stevens footnote 40 recognized two important things.  First, the State Street bank case dealt with the patentability of computer software.  Second, the ultimate outcome in State Street was correct.  Footnote 40 explains:

Judge Rich authored the State Street opinion that some have understood to make business methods patentable. But State Street dealt with whether a piece of software could be patented and addressed only claims directed at machines, not processes. His opinion may therefore be better understood merely as holding that an otherwise patentable process is not unpatentable simply because it is directed toward the conduct of doing business—an issue the Court has no occasion to address today.

Thus, the State Street patent claims,which unequivocally and directly related to a computer implemented process (i.e., software), were patentable in the views of Justices Stevens, Breyer, Ginsberg and Sotomayor despite being directed to a method of doing business.  Thus, these four Supreme Court Justices likewise agree that at least some software is patentable.

What this means is that 8 out of 9 Justices of the United States Supreme Court agree that at least some software is patentable.

So how is it possible that Lee could so miserably and provably misrepresent the patentability of software?  How could it be that he misreads Diehr and simply ignores Bilski?  What is a better question is this: Why do Forbes.com and Ars Technica give him space to spew his easily disproved brand of nonsense?

If Lee has any integrity he will issue a public apology to the Federal Circuit and issue a retraction.  If Lee doesn’t come to his senses and do the right thing in the face of overwhelming evidence that he is wrong then Forbes.com and Ars Technica should step in and do what needs to be done.

Did I Accuse Lee of Lying?

Finally, allow me to first take issue with yet another mischaracterization in Lee’s Forbes.com article.  He wrote: “patent attorney Gene Quinn outright accuses me of lying in his response to my recent piece…”

I suppose if he only read the title to my article — Lies, Damn Lies and Media Hatred of Patents (and the CAFC) — and not the article as a whole one come to the conclusion that I accused Lee of being a liar.  There were, however, other specific mentions of media bias in the article.  Be that as it may, if you read the article in its entirety it would be crystal clear that I offered a variety of explanations regarding how Lee could write something that was so embarrassingly wrong.  I suggested that his provably erroneous statements could be  explained as a result of : (1) being completely uninformed (i.e., “ignorant”); (2) being stupid; (3) ignoring the truth in favor of facts that support his predetermined narrative; or (4) having an agenda.

It seems rather obvious that Lee is not at all versed in the law and is ill-equipped to write a story about a patent law issue.  His misreading of Diehr is breathtaking, which is Exhibit 1 to demonstrate his unfamiliarity with the topic.  Exhibit 2 is his failure to even address Bilski.  But these are just two pieces of evidence that prove that patent law topics are over his head.  This doesn’t mean Lee is stupid, it just means that he is writing about something he doesn’t comprehend.  Whether you think that is stupid or not is for you to decide.  I suspect it has more to do with an extreme (and rather unwarranted) case of hubris.

I’m sure that Lee and his supporters will take issue with my observation that he has unjustified self confidence, but the alternative is that he is stupid (which I don’t believe), or that he has some kind of agenda that caused him to simply ignore facts in favor of his predetermined narrative.  He clearly has little regard for the Federal Circuit and the patent system, so it seems to me that the most likely explanation for his embarrassingly incorrect views are the result of an agenda that lead him to a predetermined narrative — facts and truth be damned.  That doesn’t mean he lied, it just means he was not objective and was horribly incorrect.  Perhaps incorrect with reckless disregard to the truth, evidence of which is that he admits that plenty of people disagree with him about Diehr, a truth that was conveniently omitted from his Ars Technica article.

It would seem that rather than apologize or retract his horribly researched and reasoned article it is just easier for Lee to attack me for pointing out that the emperor isn’t wearing any clothes.  I get it.  I’m a big boy and it doesn’t bother me.  I rather enjoy being the one to conclusively prove that Lee has been wrong at every turn.  I find it rather humorous when people like Lee need to resort to these types of tactics.

- - - - - - - - - -

For information on this and related topics please see these archives:

Tags: , , , , , , , , , , , , , , , , , , , , , , , , ,
Posted in: Anti-patent Nonsense, Federal Circuit, Gene Quinn, IP News, IPWatchdog.com Articles, Patents, Software, US Supreme Court

About the Author

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.

 

 


18 comments
Leave a comment »

  1. Gene,

    Thank you for the pointer to Tim Lee’s new article.

    In so far as I can make out, Mr. Lee’s logic boils down to taking a high school popularity poll: did “most” workers in the “software” industry know they could patent their work product? If NO, then nobody deserves a patent.

    The patent system was never intended to be used by “most” workers in the software arts or in any other respective art.

    Instead it is the Person Having Extra-Ordinary Skill In The Art (PHEO-SITA) who is expected to use the patent system. This PHEO-SITA may be otherwise labeled as an “inventor”.

    It is true that “most” artisans in a given field (i.e. software) go about doing their ordinary work in ordinary ways, never think about getting a patent for it, and rightly so because there is nothing novel and nonobvious about the way they carry out their work.

    PHEO-SITA’s are different.
    They are not “most” workers in the relevant art.
    They are the extra-ordinary.
    The ones who dare to “think different” and to follow through on their ideas.

    The reason that cases like Flook, Benson, etc. came up to the Supreme Court is because many years before that, a PHEO-SITA had the audacity to “think different” and to follow through by filing for a patent on his “software” based invention.

    In other words, there were “some” workers (the few, the proud, the inventive) who did not operate the way that “most” workers did. These PHEO-SITA’s understood that they had an invention and they had a right to apply for a patent for the same. The question is not resolved by resort to high school popularity votes.

  2. Step-

    I couldn’t agree with you more! I found it utterly flabbergasting that Lee would base his assertion on what those who are completely unfamiliar with the law thought about the law. What is even more astonishing is that he admitted it!

    The fact that the software industry didn’t understand that Diehr meant what it said is proof of nothing other than that the software industry didn’t understand what Diehr meant. There is no greater conclusion that can be drawn. Believing the Federal Circuit came first because that is when otherwise disinterested people started noticing is absurd.

    Cheers.

    -Gene

  3. What I worry is whether larger interests aren’t in play behind the scenes and that one of their strategies is about building support in the masses. They’ve tried applying pressure in numerous places in the recent past, including some success with AIA.

    Look, we all know Mr. Lee’s article is not only missing many facts but also obviously biased – but how many readers of Forbes would detect this? The majority of those readers may very well come away with the seed of an idea that “well the patent sounds like a mess and broken”. If their objective is to plant seeds then I suggest mission accomplished.

  4. Mr. Lee has posted another piece http://www.forbes.com/sites/timothylee/2012/10/05/industry-concentration-can-retard-progress-airlines-edition/ this time somehow connecting airlines with innovation, patents, centralization, and costs:

    ——–
    “Yet Virgin’s competitors seem to be seeing a $20 bill on the sidewalk and not picking it up. I don’t know if this is a function of executive cluelessness, bureaucratic inertia, or more complex implementation challenges. But in any event, it’s clear that airlines are bad at IT innovation. Even Virgin’s industry-leading technology is a straightforward application of technology of technology that has been around for 15 years.

    This insight is relevant, for example, in patent policy. As Tim Wu has pointed out patents centralize control over innovation. Theoretically, that shouldn’t affect the pace of innovation since firms can license the technologies they need, but when you introduce the “transaction costs” of patent searches, licensing negotiations, and litigation, things don’t always work out well.”
    ——–

    When you see things like this over and over you start to wonder whether it isn’t intentional.

  5. Ars Technica has a long track record of editors and hacks alike pushing an anti-patent (and anti-software-patent in particular) line.

    During the stoush over the CSIRO WiFi patent settlement earlier this year, Ars’ Editor-in-Chief Ken Fisher weighed in to defend his ‘journalist’ Joe Mullin. The editorial position is pretty clear from these comments:

    http://arstechnica.com/tech-policy/2012/04/op-ed/?comments=1&post=22734000#comment-22734000
    http://arstechnica.com/tech-policy/2012/04/op-ed/?comments=1&post=22734010#comment-22734010
    http://arstechnica.com/tech-policy/2012/04/op-ed/?comments=1&post=22734020#comment-22734020

    When there is no desire for balance or objectivity at the highest editorial level, there is little chance of it existing amongst the writers.  You have to be concerned for any young reporters who are learning the ropes in this environment.

    Mark

  6. Jodi.

    It is intentional.

    It has been for a very long time.

  7. wow, someone is completely twisting the holding of Diehr. If Gene is the best the patent bar has as rebuttal, then it is in trouble

  8. jd,

    While I do not fully agree with Gene’s interpretation of Diehr, your post is not sufficient to do anything. For starters, he his much more closely aligned with the law then the “other side.” As to your view of Diehr, you leave no indication whatsoever, so Gene is closer than you as well.

    Try to make your comments a little more substantive next time please.

  9. Mr. Lee’s article and rejoinder are troubling just by themselves, but a pernicious effect of such articles is that they encourage others equally lacking in substantive knowledge of patent law to throw their hat into the ring and add even more misinformation for consumption by the public.

    The article penned by Mr. Lee was lauded at another site that waxed poetic about the article and the book “Innovation and its Discontents…” authored by Jaffe and Lerner. For good measure, however, that site then launched into a diatribe laying much of the “problem” at the feet of Judge Rich. The diatribe can be found, unsurprisingly, at:

    http://www.techdirt.com/articles/20121001/03314720555/rogue-court-that-made-patents-so-destructive.shtml

    I can tolerate many things, but revisionist history and gratuitious, meritless insults directed at individuals are not among them.

  10. jd-

    Your comment is not deemed to be unacceptable. Please refrain from commenting in such a non-enlightening manner. If you wish to participate then participate. If you wish do contribute to the nonsense that passes for Internet dialogue go elsewhere.

    So why don’t you enlighten us on the correct interpretation of Diehr? You know, the one that contradicts what the Supreme Court wrote in Diehr and subsequently about the holding. Give it your best shot so we can all get a good chuckle.

    By way of further response, my reading of Diehr is (of course) accurate and well accepted as correct within the industry. The Supreme Court has cited Diehr on numerous occasions and has themselves explained, both in Diehr and in other cases, that the holding in Diehr was that a process that incorporates a computer computer programs is patent eligible subject matter. So that would make me correct and you incorrect. The fact that you don’t like the truth is a YOU problem.

    As for the patent bar review course I teach, it is the No. 1 course for a reason. Our first time pass rate is approximately 90% with everyone who takes the course passing eventually. That is for an exam that historically has a pass rate that hovers around 50%. In any given year we teach 40% or more of those who take the exam. So you do the math. If you don’t take the PLI course then you are taking your chances.

    -Gene

  11. Anon-

    Let’s try and get into a substantive discussion of Diehr if we can, despite those that will interject nonsense from time to time.

    Where do you disagree?

    Cheers.

    -Gene

  12. Thanks Gene,

    I have two distinctions that I would make:

    The first trouble I have with your version is the propensity to elevate a component to a level of the whole.

    What I mean by that is that the Court in Diehr did not say software per se is patent eligible. The Court did not say that any individual element is per se eligible. What the Court said was that individual elements, whether or not those individual elements are eligible themselves in a vacuum is not what is important, or even that an analysis of individual element eligibility should be on the table; but rather, the claim as a whole must be looked at to gauge patent eligibility.

    The second trouble I have (and it is a minor one), is that I believe that a distinction between patent eligibility and patentability should be not only maintained, but stressed. The notions of novelty, obviousness, and enablement are not “front gate” notions, and a strict separation between a wide open and welcoming front gate of 101 and the discerning (and earning of right) requirements is necessary in any 101 discussion.

    I do not think that people fully realize what it means to bar something at the front gate of 101.

  13. EDITOR’S NOTE: Art has been banned and his comment deleted.

  14. “Listen! A farmer went out to sow his seed. As he was scattering the seed, some fell along the path, and the birds came and ate it up. Some fell on rocky places, where it did not have much soil. It sprang up quickly, because the soil was shallow. But when the sun came up, the plants were scorched, and they withered because they had no root. Other seed fell among thorns, which grew up and choked the plants, so that they did not bear grain. Still other seed fell on good soil. It came up, grew and produced a crop, some multiplying thirty, some sixty, some a hundred times.”

  15. Gene,

    Please consider banning “Art.”

    He has posted the same nonsense over Patently-O under the pseudonym “Gene’s Love Child,” and has a history of posting pure unsubstantiated anti-patent rhetoric.

  16. Art has been banned.

    Without even getting into the absurd and unfounded substance of his comment allow me to point out what should be obvious, but apparently is not.

    1. It is unacceptable to cut and paste and post the same comment over and over to various articles.

    2. Comments that have nothing to do with the post are not deemed acceptable.

    The pages of IPWatchdog.com will not be usurped by those with their own agenda and ridiculous paranoid delusions.

    -Gene

  17. Anon-

    Definitely a fair point on your second point.

    I think I know what you are saying about point #1 as well. The “magic,” however, in the Diehr case was the software. The software was just applied to what had previously been a real world (and tangible) process. I think this then leads directly to Alappat, which then logically lead to the next steps in the evolution of software patent eligibility.

    I’ll give this some more thought, and would appreciate additional feedback on your part as well.

    I do, however, think it is clear that the Supreme Court did say in Diehr that a computer implemented process can be patented. I don’t think we disagree on that, do we? As they (and the Federal Circuit) recognized in Bilski, there either needs to be some kind of transformation, or there needs to be some kind of tethering to a machine. Arguably in Diehr, and then subsequently in Alappat, there was both a transformation and tethering. In State Street there was at the very least tethering that would satisfy MOT.

    Thoughts?

    -Gene

  18. Gene,

    Sorry for the delay – I have been swamped.

    I think my thoughts above are reflected in the following quote from Alappat:

    Diehr also demands that the focus in any statutory subject matter analysis be on the claim as a whole. Indeed, the Supreme Court stated in Diehr:

    When a claim containing a mathematical formula [, mathematical equation, mathematical algorithm, or the like,] implements or applies that formula [, equation, algorithm, or the like,] in a structure or process which, when consid-ered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.

    Diehr, 450 U.S. at 192. In re Iwahashi, 888 F.2d at 1375, 12 U.S.P.Q.2D (BNA) at 1911; In re Taner, 681 F.2d 787, 789, 214 U.S.P.Q. (BNA) 678, 680 (CCPA 1982). It is thus not necessary to determine whether a claim contains, as merely a part of the whole, any mathematical subject matter which standing alone would not be entitled to patent protection.

Leave Comment