It makes no sense for an algorithm to be unpatentable simply because it is implemented in software

By Gene Quinn
October 1, 2015

David-Kappos-ia-1-21-2011 109 copy 2

David Kappos

David Kappos and Aaron Cooper recently co-authored a  paper arguing that patents on software-implemented inventions are accomplishing the constitutional imperative to promote progress. Indeed, the paper makes the case that these so-called software patents have led to tremendous growth in the software industry, have fostered open innovation and interoperability, and are incentivizing solutions to unique problems.

I caught up with Kappos for an on the record interview on Monday, September 14, 2015. What follows is the second and final segment of our conversation. To start reading from the beginning please see The Case for Software Patentability, An Interview with David Kappos. In part 2 below we discuss how bizarre it is that an algorithm can be patented when it is implemented in a hardware, but patent ineligible when the same algorithm is implemented in software.

QUINN: Yes, probably true, but let me back up for a second. As you were just giving that answer there was one thing that you said that we really need to further discuss, because I can just hear the critics with their condescending laugh already. You said that back in the day of Jefferson and Madison there were patents granted that you and I would probably call software patents. I can just hear the critics, “Doesn’t he know that computers didn’t exist.” And what it really signifies is a problem in understanding what it is that you’re claiming.

Martin Goetz is the inventor who the New York Times and others have credited with receiving the first software patent issued back in the 60s. He filed his patent application in ’65 and it was issued in about 1968. Martin has done some writing for us over the years and he is recently saying that we really need to stop calling these things software patents. Just stop. It’s not a software patent, it’s an invention. It’s an innovation. And so when you said that they issued these patents that you look back on throughout time and they would be software patents it’s because of the way that you describe the innovation. And we use those same techniques to describe the innovation today because it is in many regards abstract.

KAPPOS: Right, yes.

QUINN: And how do you describe that? You know, you have to do the best that you can. And I really wish it was the best that you can was the law through the lens of the person who’s skilled in that area, which up until the last few years had always been the whole point of patent law. And I wonder whether that still is true, I’m specifically thinking about the Algorithm cases here. It seems we are caught between a rock and a hard place because you can’t talk about this issue without using the word “software” or “software patents.” But Martin has an excellent point. It does no good to talk about this as software. It’s you’ve got a windmill or wind turbine that has been improved. Who cares how it has been improved. It has been vastly improved.

KAPPOS: We tried to hit on this point in the paper and towards the beginning made the point that look, it really is a bit of a misnomer to be talking about software patents. What we’re really talking about is algorithms that actually may or may not be implemented in software. It’s actually common, and you’re seeing it now in the smartphone area. Back when I was an engineer we saw it in mainframe computers where you’d make an invention and frequently initially the software wasn’t fast enough to be able to run the algorithm. So the algorithm would first be built in silicon, really expensive, but you’d wind up then fabbing up chips to be special purpose chips to run the algorithm. And then later as the software got faster the underlying computer systems got faster you’d reimplement the same algorithm in software, same algorithm, same invention but just reimplement it in software and then even later after that when the ASIC density got good enough you’d reimplement yet again in an application-specific integrated circuit, an ASIC. And so you’d have a little bit of a hybrid, if you will, but more on the hardware side, it’s an IC. It’s again putting the algorithm in a chip. And so what you’d see by looking at that is that it made no sense to say that an algorithm was patentable if it was implemented in a hardware chip. But the same algorithm implemented in software was unpatentable. Just didn’t make sense to say that.

Looking at the nature of the innovation that way brings home the fact that the invention isn’t software. The implementation of the invention is in software maybe, but the invention is the algorithm. Another way that I sometimes point this out, Gene, is that when we make an invention we frequently will file a patent application in various countries. Maybe we’ll file one in France, maybe we’ll file one in Germany, maybe we’ll file one in Japan, the U.S., China, et cetera. Nobody would seriously say that we’ll accept a patent application in some of those languages but not in others of those languages. Nobody would seriously say that. Well, when you talk about submitting a patent application that involves an invention that’s implemented in software you really are talking about the same thing because software is just a medium of expression like a language. French, German, Spanish, and C#, they’re all languages. It’s just another language. So it has always seemed to me that it made no sense to say we’re going to discriminate against some medium of expression, software being one medium of expression just like any other language is a medium of expression. We’re going to permit patenting for some medium of expression but we’re not going to permit it for others. It’s like saying we’ll take that patent application if it’s in French but not if it’s in German. What sense does that make, right? It makes no sense at all.

QUINN: I completely agree with you. And hopefully this will eventually get through to the people who are the decision makers and to the judges. I hope that over years as we start getting more judges that grew up not playing Pong but grew up really taking some coding classes in high school or college, or who have some familiarity with computers, we’ll get different decisions because it really is intellectually dishonest to treat software differently when it should be all about a particular innovation and making something better. And the frustrating thing from the practitioner’s side, and it has to be even more frustrating from the client side, is just tell us how you want us to describe this and we can describe it that way. But it seems right now what we have a Supreme Court that just says “NO.” No, not that way, no, not that way, no, not that way either. And then Congress is completely absent on this issue. And the patent office is left to try and reconcile all this because they actually get it. They understand that this is about innovation. But how do we be true to this law and be true to what we know is correct and giving patents on innovations? We’re in this hodgepodge space where we are left to try and claim it however we possibly can. And I think to some extent you’re better off going back to the way software was claimed in the 70s, you know, after the Supreme Court essentially said software is not patent eligible. You just claimed a machine that did certain things. And that just bothers me because that’s so much form over substance.

KAPPOS: Right, right. I agree, Gene, I’ve always had a problem with claiming software as a special purpose computer or special purpose machine. I’m of the view that you should just call it like it is, it’s a computer program. It’s an algorithm for doing X or substantiated as a program. And the steps of the program are either patentable or they’re not. That’s where I think we fortunately got some much better tools now to help us in that regard than we did in the past. We’ve got the Nautilus decision, we’ve got KSR that I mentioned before, we’ve got a whole slate of decisions covering what we used to call 112 6th paragraph, which is means plus function language and functional language. I wrote a paper, published now in Stanford Journal of Law and Technology, on the developmental law in that area and it was a hard paper it turned out to get published. Not that Stanford SJLT didn’t want to publish it, they did. But what kept happening is each time it went into the publication cycle a new court decision came out and we had to pull the paper back and add the new court decision to it because the law is developing so much in that area. I think it’s a good thing though and it’s finally bringing us to a point where we’ve got the analytical tools available to us to make sure that algorithmic claims of any kind, whether they’re software implemented or otherwise, are properly patentable if they meet the right requirements.

This brings me to the other point, Gene, which is that I have a lot of respect for the system in the U.S. at the end of the day. It’s not at a good place right now, as you and I know, coming off the back of CLS Bank. And there’s unfortunately blatant discrimination going on now disadvantaging software based innovation, software implemented innovation from patent coverage. But hopefully that will come back and we’ll have chances to correct it. The bigger picture though is I’m glad that software has not in recent era by statute or by judge-made law been declared unpatentable per se as it has been in some other places. The U.S. has instead done the right thing, which is to struggle with an admittedly hard problem. We’re struggling with it, but that’s the way you eventually find a way and that’s the way leaders deal with leadership is to struggle with hard problems. You don’t have any headlights to follow because you’re in the lead. You’re groping around, you’re looking for a solution. We’re still doing that, but I think we are making progress and we’re getting closer.

QUINN: As hard as these decisions really are, and 101 decisions no matter how easy they seem on the surface are extremely difficult, but the issues are only going to get harder as we get through the next wave of litigation that’s going on in the district courts and working its way up to the Federal Circuit. Some of those cases deal with much more substantive technologies. One of the ones that’s kicking around relates to pausing live TV and then going and watching it in another room where you left off. That’s revolutionary. All of the cable companies, Direct TV, Dish TV they all run ads about how wonderful that is and how you can’t live without it and if something like that isn’t patent eligible then I think we’re going to really have to have a lot of difficult conversations. Anybody who’s ever done anything with software has to know that is not trivial. Cable and satellite TV companies were so ecstatic when it happened and it is so useful to consumers. So I think we have had a little bit of bad cases or bad claims make bad law. And even with those bad claims the cases were difficult, with numerous difficult issues. So we’ve have more trials and tribulations in store before we get out to the other side.

KAPPOS: Well, as you say the technology is getting more complex all the time, and certainly there are examples of both kinds: important and difficult innovations embodied in software, and trivial, non-inventive implementation details embodied in software. But I’m for keeping going and keeping going on the struggle to sort the inventive from the non-inventive. I think it is a mistake to give up by adopting these litmus tests, as in, well if it’s abstract then just throw up your hands and declare the whole thing to be unpatentable. That’s a bad phase we’re in right now. But that’s not the way we usually do things in the U.S. As we’re seeing right now it’s not very principled.

QUINN: Right. And I fundamentally just can’t believe that when push comes to shove any judge on any level would find that IBM’s Watson computer and the processes that it enables are not patent eligible.

KAPPOS: Right.

QUINN: Watson is really the first generation of the Star Trek computer that we all grew up looking at and saying wouldn’t it be great to have this computer you could just talk to and it would give you any answer on any subject. That’s what IBM created.

KAPPOS: Right, yeah. Yeah that’s exactly right. I’ve used that example, too, before to say how in the world can you look at that and say that it’s not innovation meriting patent protection?

QUINN: Exactly. All right. Well, I really appreciate you taking the time and I think we went longer than we were supposed to so thanks for staying long on the conversation. It’s always good to talk to you.

KAPPOS: Likewise, Gene. It’s a pleasure to speak. You know, I continue to marvel at your insightful and piercing analysis of these very tough issues so just keep going you’re doing great work.

QUINN: Well, thank you, thank you very much.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Gene Quinn

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 50 Comments comments.

  1. Edward Heller October 1, 2015 11:58 am

    Alappat expressed an algorithm in its claims — in means plus function format. The hardware disclosed was part of a graphics unit for a display. The hardware claims were eligible regardless that they recited an algorithm.

    The court also found the computer-implemented equivalent of the hardware circuits eligible as well because of its limitation to a “rasterizer” which was a known component of a graphic unit.

    I fully endorse Alappat. If people follow its formula, new algorithms are in fact patentable regardless of their being presented in hardware or software, so long as they are limited to a specific machine — in the case of Alappat, a rasterizer.

  2. Night Writer October 1, 2015 1:17 pm

    There were some papers about this after Benson. Essentially, the algorithm should be treated like a component and be eligible as a method.

    In fact there is a great SCOTUS case Deener that states in dicta something to the following effect. What difference should it make what type of grain is being used? The method should be cover all the different grains. Deener is actually a great case from the 1800’s before the punch card machine and before politics took over the arguments. In Deener, a person could perform the method with their body, and yet the SCOTUS justices understood that that didn’t make it ineligible. Not only that but Deener completely destroys Lemley’s arguments about functional claiming as the justices understood that the combination of functions is what is important and how they are carried out was not.

    But, now we live in a world with paid bloggers, Fed. Cir. judges being OK’ed by Google, and K street running a never ending campaign to burn down the patent system.

    Thank you Kappos for a bit of sanity. The views expressed everywhere (even comment 1) give a sane person trained in science a headache.

  3. Curious October 1, 2015 2:50 pm

    so long as they are limited to a specific machine — in the case of Alappat, a rasterizer
    Interesting, but what makes a specific machine “specific”? Is it enough that I can assign some arbitrary name to it? A “general purpose” (whatever that really means) computer is like a toolbox full of hundreds of different tools. Your specific machine (e.g., a rasterizer) is like a 3/8″ Allen wrench. Why should the 3/8″ Allen wrench be more or less patent eligible than the toolbox (that happens to include the 3/8″ Allen wrench)?

    The problem I have with your policy position is that it isn’t accompanied by sound logic.

  4. Edward Heller October 1, 2015 4:34 pm

    Curious, in Alappat, the hardware claim claimed a rasterizer, a component of a graphics unit. The equivalent programmed computer claim did the same thing.

    Circuits have electrical inputs and outputs. They preemptively have utility because they process real signals.

    I think the courts could recognize a programmed computer equivalent of a circuit provided that the claim were limited to processing electrical signals in some fashion, because that is what circuits do.

  5. Anon October 1, 2015 4:42 pm

    There is no basis in reason to accept the one and exclude the other.

    This is why a fundamental understanding of software as equivalent to hardware (and yes, Mr. Heller, and equivalent to firmware) is essential for any meaningful discussion on the merits.

    Yet another critical baseline understanding to be had for any meaningful discussion on the merits: there is no such thing as “software” that is not meant as a machine component.

    Understanding this then, the analogy of patent eligibility for machine components in and of themselves as manufactures should be a baseline acceptance. If we start from there, what then is the argument against software? I have yet to see a cogent sustainable position advanced that takes into proper account the necessary predicates.

  6. Night Writer October 1, 2015 4:56 pm

    >> no such thing as “software” that is not meant as a machine component

    This is exactly right. Moreover, the big lie in Mr. Heller’s arguments is that software and hardware are not equivalent, but they are. I’ve written patent application for real consumer devices that sold 10’s of millions of units. I’ve worked with Ph.D.’s who design the devices to try to claim them so that the claims can’t easily be designed around by pushing or pulling some function into or out of hardware.

    That is reality. Not only that but there really isn’t hardware as almost any hardware can have a portion of it turned into software. You know, big chips can put little processors on the chip and put some function in software pretty easily.

    That is reality. Mr. Heller’s nonsense gives me a headache just to try and put it in my head because it does not comport with scientific reality.

  7. Ready Made October 1, 2015 5:26 pm

    The problem is that you are not even talking about the patent eligibility questions that have been famously raised and ruled on recently. All of the high profile, ineligible, patents were not the kind of algorithm that goes onto a chip and evolves into software because they were doing the innovative calculations. Look at the claims, they claim questions. The specific algorithm for controlling a robot arm may be patented, but when the claims are directed to (and only to) the steps required to move a robot arm, then you have the patentability problem.

    Bilksi is exactly such a case, Prometheus is such a case, and Alice is such a case. By describing what you are in this interview, while essentially complaining about something completely different, you are misguiding the readers on the prospect for change.

  8. Gene Quinn October 1, 2015 5:37 pm

    Ready Made-

    You are entitled to your opinion, but your opinion seems to be based on an incorrect understanding.

    First, I have numerous times written about the claims and have lamented that bad claims have made bad law.

    Second, you completely ignore the truth that the sweeping statements made by the Supreme Court are not limited to the bad claims they have considered. For example, rather than using 102 and 103 appropriately to find the Mayo claims patent ineligible the Supreme Court purposefully conflated 101 with 102 and 103. Similarly, in Bilski rather than say mental processes are not patent eligible they made sweeping statements about all method claims. Still further, rather than saying they don’t like patents that relate to financial processes they make sweeping statements in Alice that apply to all software.

    Third, you are ignoring the reality that the claim structure invalidated in Alice is the same claim structure used in all software patent cases, including the same structure employed to claim IBM’s Watson. Do you really think Watson should be patent ineligible?

    Fourth, your comment shows a complete lack of understanding with respect to how Bilski, Mayo, Myriad and Alice are being applied at by patent examiners, the PTAB, the District Courts and the Federal Circuit. In each instance the Supreme Court’s sweeping statements are being stretched to apply to innovations of a wholly different technical character.

    Fifth, you say that an algorithm for controlling a robot arm may be patented but not claims defining the required steps to move the robot arm. Talk about disingenuous. Method claims define steps. Algorithms define steps. You are trying to make a ridiculous and unfounded distinction where none exists.

    What is misleading is your comment.

    -Gene

  9. Edward Heller October 1, 2015 9:04 pm

    Night, with all due respect, take a look at my discussion of Alappat. I fully endorse Alappat, and the equivalence of a programmed computer for the disclosed circuits in a rasterizer.

    I think, Night, that it is you that does not accept the holding of Alappat. To this day I do not understand your reluctance to simply add “signals” to your claims to improved circuit-equivalents.

    Thus, you are trying to claim a new compression technique. Signal in. Compress. Signals out. You then have the same kind of claim that was approved by the Supreme Court in American Bell Telephone where the signal itself was modified and improved.

  10. Anon October 1, 2015 10:05 pm

    Mr. Heller,

    You famously do not understand the Alappat case and the fact that a single case has as many holdings as necessary for the prevailor to prevail.

    The government raised multiple angles of attack, and if any one of those were successful, the result of the case is different. Each and every successful repelling results in a holding.

    Thus, your statement here of “I fully endorse Alappat falls far short, and the addendum of “in a rasterizer” completely misses the point of the “new machine creation” that comes along with a true full endorsement of Alappat.

    Further, you continue to attempt to view “computer” in a completely archaic and non-Person Having Ordinary Skill In The Art manner. Have you ever heard the term “computer on a chip” or perhaps “virtual machines”?

    Lastly, it is purely patent profanity and a complete lack of understanding of the reality of physics in this world that likely creates the (rightly due) reluctance. You especially Mr. Heller have not been forthright with the full meaning of the Alappat case. Is it any real surprise that terms must be couched because the judicial branch is seeking a particular ends?

  11. Anon October 1, 2015 10:07 pm

    As to signals, compression and other like inventions, shall we strike up a conversation about encryption?

    Last I recall, attempts at such a discussion tend to end in your stony silence.

  12. Night Writer October 1, 2015 10:17 pm

    >>Further, you continue to attempt to view “computer” in a completely archaic and non-Person Having Ordinary Skill In The Art manner.

    This is exactly right. Not only that you have not addressed my points about the equivalence of software and hardware. And in Alappat the holding in terms of POSITA is that a programmed computer is a new machine–the software is a component. That captures the reality of the equivalence of software and hardware.

  13. John K October 1, 2015 10:33 pm

    Nice score on the interview Gene!

  14. Ready Made October 2, 2015 12:55 am

    Gene- I actually agree with you on points 1-4 (regarding point 3, I have no idea how Watson works, 99% of people do not, it is not reasonable to continue to parade him around).

    Regarding point 5: You said, “Talk about disingenuous. Method claims define steps. Algorithms define steps. You are trying to make a ridiculous and unfounded distinction where none exists.” But the distinction is incredibly important because the “steps” I am talking about are known. Even one not skilled in the art knows you need to move the arm, need to have feedback, need to process, etc. And when you claim those steps, and “thereby” something new happens (which is what the claim is directed to thereby picking apples from a tree, for instance), you get Alice. (I suppose this is conflated into #1). The point is that bad claims make bad law because 103, was and is incapable of dealing with the routine steps + new information, or thinking of applying them to a new problem.

    In your practice, and many others, this may be causing real troubles for you at the USPTO, but that is because the law has been dealing with, essentially, cases where you are driving a Ford F-150 over a new patch of land or executed a really cool left turn. It is actually the fault of attorneys in our field that the 4 or 5 seminal cases in this area related to terrible patents. Now, perhaps that is because of pure luck, or some other cause, but it implies that a majority of the cases were not the proverbial “Watson”.

  15. Night Writer October 2, 2015 6:32 am

    The exercise that real patent attorneys have to go through to claim real devices is the following. You say, well someone can design around by putting an A/D converter and then processing the signals in software and then put them back out or they could build a circuit to process the signals.

    Mark Lemley has wasted ten of thousands of years of peoples lives by mudding the waters of patent law and in particular with functional claiming. Rather than listening to a Stanford professor who has runs many businesses on the side to generate millions of dollars for himself, the SCOTUS and Fed. Cir. should be listening to real scientist/engineers and patent attorneys about how innovation actually occurs about how it is actually claimed.

  16. Joachim Martillo October 2, 2015 7:22 am

    Algorithm and method have multiple meanings.

    An algorithm like the Sieve of Eratosthenes is pure math. It is a theorem of number theory and represents pure analytic knowledge from the standpoint of epistemology. If the Sieve of Eratosthenes were unknown today, and if a number theorist were to derive it today, it is hard to see how it could be patent-eligible.

    Java has a class BigDecimal, which handles unlimited precision numbers and which has about 50 associated methods. It is hard to understand how object oriented programming system (OOPS) methods could be patent-eligible if the method inputs and outputs are restricted to the computer system on which a program using the method runs and if the OOPS methods do not improve the computer system in any way.

    On the other hand, the methods and algorithms that an industrial chemist develops could easily represent limitations that could transform an abstract chemical reaction into a patent-eligible invention.

  17. step back October 2, 2015 8:21 am

    Night Writer says at 14:

    Rather than listening to a Stanford professor [Lemley] who has and runs many businesses on the side to generate millions of dollars for himself, the SCOTUS and Fed. Cir. should be listening to real scientist/engineers

    Yes but.
    Speaking in tongues about plucking leaves from a tree is so much easier than understanding what it takes to synthesize and isolate specific organic molecules that hither-fore had not been produced by Nature alone without any intervention whatsoever by man.

    See The Pope and the SCOTUS
    http://patentu.blogspot.com/2015/09/the-pope-and-scotus.html

  18. step back October 2, 2015 8:28 am

    Joachim Martillo at 15:

    The fault lies not in our stars but in the jiggery pokery words we use.

    (And in our over-missestimations of the depth of our personal knowledge bases.)

  19. Joachim Martillo October 2, 2015 8:45 am

    The In re Alappat is extremely confusing, but I think the claim is directed to a virtual rasterizer device that is implemented in software.

    Decades ago I wrote a virtual serial packet device that made it possible to use a physical serial character device like a packet-oriented Ethernet device.

    Such virtualization does provide improvement over the original physical devices, and claims directed virtual devices and virtual device methods have been allowed since the 80s.

  20. Joachim Martillo October 2, 2015 8:46 am

    The “In re Alappat decision” is extremely confusing, but I think the claim is directed to a virtual rasterizer device that is implemented in software.

    Decades ago I wrote a virtual serial packet device that made it possible to use a physical serial character device like a packet-oriented Ethernet device.

    Such virtualization does provide improvement over the original physical devices, and claims directed virtual devices and virtual device methods have been allowed since the 80s.

  21. Night Writer October 2, 2015 8:58 am

    step back @16: That is good. And it fits. The SCOTUS is trying their hand at the same game as the Pope did to Galileo. The SCOTUS is trying to dictate how science works.

    I still think the reason that we are having so many problems with the SCOTUS is that they believe that their minds are disconnected to the brains. They don’t seem to believe there is a physical basis for their thinking.

    You have to really wonder what is going on when most judges seem to think that a machine that does their work is abstract or just so easy to builid that it can’t be patentable. How in the world does this make sense?

  22. Curious October 2, 2015 9:37 am

    I think the courts could recognize a programmed computer equivalent of a circuit provided that the claim were limited to processing electrical signals in some fashion, because that is what circuits do.
    Make makes “processing electrical signals” special? Also, what is a “signal” but information?

    A programmable computer is nothing but a configurable tool. It is a Swiss Army knife with millions of potential attachments. A computer program is an improvement to the machine that reconfigures the computer to perform something it did not perform before (or perhaps make it perform the same thing but in a different manner). It is how the “Swiss Army knife” (i.e., computer) obtains its attachments.

    A programmable computer without programming is an expensive paperweight. A programmed computer is the probably the most valuable and widely used tool in today’s society. Not only does a programmed computer fit squarely within the scope of 35 USC 101, as a matter of policy, shouldn’t we be protecting the preeminent technology of the new millennium?

  23. Anon October 2, 2015 10:02 am

    Joachim at 15: beware the differences (and overlaps) between math, pure math, applied math and MathS.

    Just because something appears to be “math” does not make it so.
    MathS is a philosophy, at its most extreme exemplified by Tegmark (everything is math).
    Applied math is and has always been patent eligible – in its objective form. It is only through muckery that such has been made a vulgar mixture of patent profanity and scrivining in order to protect the inventions of man.

    While I like your swiss army knife analogy to a degree, to another degree it falls short. A swiss army knife has “everything already in there” while the potentiality of the modern computer requires something more – something inventive – to be added in order to unfold that “new tool.”

    The analogy only goes so far – and suffers from the same limitation of “the toaster” or “the microwave” analogies. A critical difference is knowing where the analogy stops being appropriate.

    The limit can be appreciated with the patent law doctrine of inherency. With a computer, some would have it that ALL future inventions are “already in there.” This is just not so. One can easily “test” the eligibility position and the weight to be given any argument concerning eligibility by examining whether or not such positions and arguments nullify future invention.

    Just as Morse was not allowed to claim such “any future invention,” the so-called logic as exemplified by the US television show “House does not – and cannot – reach to nullify “any future invention” when such invention uses computers and software.

  24. Gene Quinn October 2, 2015 11:00 am

    Thanks John K. I hope all is well with you.

  25. A Rational Person October 2, 2015 12:07 pm

    A simple example of why limiting an algorithm to particular machine in a claim is problematic and unfair.

    Let’s say I invent a new algorithm that controls how a cylindrical shaft is rotated by periodically starting and stopping the rotation of the shaft at a microsecond level so that vibration of cylindrical shaft is reduced.

    Can you imagine the number of different devices that such an algorithm could be useful in? Such an algorithm could be used in car engines, drive shafts, electronic toothbrushes, rotary saws, drills, electronic screwdrivers, etc.

    Plus, the algorithm might not even be implemented in a chip present in the electronic device but by a separate computer controlling the electronic device.

    As I have written previously on this blog, one of the consequences of the recent Supreme Court cases is to devalue complicated complicated control systems in comparison to simpler mechanical inventions.

    For example, in my hypothetical example above, based on Alice, there is a question whether an electronic hand tool that employs the algorithm to control the spinning of its shaft is a “different device” in comparison to a device with the same computer chip controlling the device that does not employ the algorithm.

    In contrast, if I change the shape hunk of metal I put in the electronic hand tool’s chuck, say from shape of a drill to the shape of a screwdriver head, there is no question based on Alice that I have changed the device into a different device.

  26. Edward Heller October 2, 2015 12:18 pm

    Jaochim Martillo: “The “In re Alappat decision” is extremely confusing, but I think the claim is directed to a virtual rasterizer device that is implemented in software.”

    Actually, get the patent, look at Fig. 3. It discloses a circuit in a graphics units known as a rasterizer. That was claimed using means plus function. The court held that the claim is properly construed to read on that hardware. The court also considered the eligibility of a means plus function equivalent: a programmed general-purpose digital computer that substituted for the hardware in the graphics unit. They held at this was eligible under 101 because the claim was limited to a rasterizer, a specific machine.

  27. Anon October 2, 2015 1:37 pm

    Actually Mr. Heller – read the decision without your pre-determined blinders on, then read the (aft repeated) discussions of that decision, and be willing to recognize where your pre-determined views simply fall short.

    You still have not reflected a full appreciation of the holding (yes, holding) of that case.

  28. Joachim Martillo October 2, 2015 2:34 pm

    Ned Heller: “The court also considered the eligibility of a means plus function equivalent: a programmed general-purpose digital computer that substituted for the hardware in the graphics unit. They held at this was eligible under 101 because the claim was limited to a rasterizer, a specific machine.”

    I think the above is the equivalent of what I would have called a virtual rasterizer (or possibly a virtual rasterizer circuit) back when I was teaching computer science at MIT or Harvard.

    As an aside, back when I was helping with the development of the X Windows System at MIT, I believed that valid patent claims could be directed to aspects of the X Windows System. Because Jim Gettys was adamantly opposed to software patent claims, I was never able to make a patent application, but the X Window System was constructed around the concept of a network-transparent virtual high resolution raster graphics device.

    This virtualized device definitely represented a tremendous improvement over the physical high resolution raster graphics device and over the prior art non-network transparent virtual high resolution raster graphics devices.

    In other words, in prior art systems a process could use a virtual high resolution raster graphics device as an output device, but the physical high resolution raster graphics device on which the virtual high resolution raster graphics device was implemented had to be attached to the same computer system that provided the execution environment for the aforesaid process. The X Window System eliminated that requirement.

    To wit, any virtual high resolution raster graphics device, whose physical high resolution raster graphics device was attached to a network host network-accessible to the host providing the execution environment for a process generating high resolution raster graphics output, could serve as the output device for this process.

  29. step back October 2, 2015 5:21 pm

    Rational Person @25

    Sorry, the Supremes have not yet updated their belief system to admit to electrons existing and in different patterns.

    The electrons on the surface of your drill bit are in a different pattern than the electrons on the surface of your screw driver shaped bit.

    The electron cloud about the surface of a first molecule (say full DNA ha ha) is different than when about the surface of a smaller second molecule (say DNA fragment).

    The pattern of electrons in a computer programmed one way is different than that of a computer programmed another way.

    Our whole world is mostly interactions between electron wave functions of different configurations. The atomic nuclei are usually buried deep inside (except when ionized).

    But will the Mount Olympus demigods concede to the existence of transitory electrons? No. Their world is composed of earth, wind, fire and water.

  30. Night Writer October 3, 2015 8:11 am

    stepback >>But will the Mount Olympus demigods concede to the existence of transitory electrons? No. Their world is composed of earth, wind, fire and water.

    And, they believe that their minds process information in the spirit world. They grudgingly admit there is some physical basis for information processing, but it is not integrated into their other theories of the mind.

    You know, Mr. Heller’s model of information processing is really based on this same principle. For if one really understands information processing as a physical process, then one must admit the equivalency of software and hardware.

  31. Night Writer October 3, 2015 9:14 am

    >>The court held that the claim is properly construed to read on that hardware.

    No. Alappat’s guidance is that software converts a general purpose computer into a special purpose machine.

    You know Mr. Heller, you seem to have a purpose in continually misstating the holding of 101 cases and claim construction cases. For example, you consistently state that claims are not to be read as whole but dissented into unpatentable vs. patent subject matter first. That is not what Diehr held and Diehr has recently been affirmed by the SCOTUS as good law.

    You also don’t appear to want to enter into any real debate about these issues, but just repeated state the same thing over and over. It is very clear that you are holding the party line of trying to restrict patents for information processing patents.

    I am happy to debate real issues with you, but you obviously have a hidden agenda. Let’s, for example, debate just one issue: are hardware and software equivalent? What are the limits of the equivalency and how does that relate to claim language. This is a core issue.

  32. step back October 3, 2015 3:50 pm

    Night Writer @30 explains, “For if one really understands information processing as a physical process, then one must admit the equivalency of software and hardware.

    Precisely.

    When a pulsed cluster of electrons rushes into the control gate of a transistor in the next circuit stage of a supposedly “generic” computer, the receiving transistor does not know if those electrons arrived due to “data” (software) stored in a preceding memory unit or due to the activation of a preceding tri-state drive circuit (hardware) or both. And frankly, it doesn’t care. It moves nonetheless.**

    ** https://en.wikipedia.org/wiki/And_yet_it_moves

  33. Joachim Martillo October 4, 2015 5:22 pm

    According to In Re Alappat U.S. Court of Appeals Federal Circuit July 29, 1994 33 F.3d 1526, 31 USPQ2d 1545, the Court states the following.

    The reconsideration Board majority also erred in its reasoning that claim 15 is unpatentable merely because it “reads on a general purpose digital computer ‘means’ to perform the various steps under program control.”25 Alappat, 23 USPQ2d at 1345. The Board majority stated that it would “not presume that a stored program digital computer is not within the Section 112 Para. 6 range of equivalents of the structure disclosed in the specification.”26 Alappat, 23 USPQ2d at 1345. Alappat admits that claim 15 would read on a general purpose computer programmed to carry out the claimed invention, but argues that this alone also does not justify holding claim 15 unpatentable as directed to nonstatutory subject matter. We agree. We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software. In re Freeman, 573 F.2d 1237, 1247 n.11, 197 USPQ 464, 472 n.11 (CCPA 1978); In re Noll, 545 F.2d 141, 148, 191 USPQ 721, 726 (CCPA 1976); In re Prater, 415 F.2d at 1403 n.29, 162 USPQ at 549 n.29.

    The Court is not asserting “that [any] programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software”.

    Alappat and the Court were referring to (1) emulation of a hardware circuit/device by means of general purpose computer or in reference to Diamond v. Diehr were referring to (2) a general purpose computer acting as a custom turnkey device. In both cases, one would need special means to interface the general purpose computer to the whole system.

    Diehr probably used some sort of serial device connected to RS-232 ports to read temperature probes and another serial device connected to RS-232 ports to open the molds.

    In the case of a general purpose computer emulating a rasterizer circuit, I would probably need some sort of register on an breadboard adapter card from which the general purpose computer could read the input data and then another breadboard adapter card to which the general purpose computer could output the transformed data to the CRT.

    It’s a standard technique know to a PHOSITA. There are also other ways to do the same thing. I have certainly used such techniques to develop discrete or integrated circuits.

    Emulation is a common step in the development of custom physical devices. It makes sense that Alappat would claim both the discrete circuit that he developed and emulations thereof.

    Ned Heller seems to say the same thing in a more lawyerly fashion in #26.

    A virtual device as I describe it in #20 and #28 is an emulated device when there is no intention to transform it into a physical device.

  34. step back October 4, 2015 7:41 pm

    Joachim Martillo @33,

    As I tried to explain at comment #32, the electrons don’t care what funny names we ascribe to them (for example “soft”ware, “hardware”ware, up in the clouds ware, etc.). They do what they do no matter what noises we make.

    The problem lies in the inadequacy of the English language to express the nuances of code that falls into the category of the “useful arts” and code that falls into the category of the entertainment arts.

    More to the point, a computer that is loaded with a digitally coded version of a musical artist’s latest hit (e.g. White Rabbit) is a “different” computer from that not loaded with the song. A computer that is loaded with a digitally coded version of an engineer’s latest and improved motor control algorithm (e.g. Step Motor 3.0) and is configured to execute that algorithm is a “different” computer from that not loaded with the step motor controller.

    We all appreciate in our guts that the new song should not be patent eligible and that perhaps the improved motor control algorithm should be. We lack the words to express that appreciation.

    White Rabbit lyrics youtube:
    https://www.youtube.com/watch?v=hWWsfrfq69A

  35. step back October 4, 2015 7:42 pm

    Gene, release from spam jail please

  36. Anon October 4, 2015 8:09 pm

    Joachim,

    Your post at 33 is very confusing. It appears that you want a different reading of the decision and you are inserting a lot of “stuff” that is not there.

    The court very much DID assert that programming creates a new machine.
    There was NO discussion of “adapter cards” or “need[ing] special means to interface the general purpose computer to the whole system.”

    What Ned is saying at #26 (in any fashion) is NOT what the court said. Ned is misapplying the case and demanding an ends of a specialized machine as the reason for the holding – the veritable horse before the cart. His is an invitation to circular reasoning along with a lot of hand waving as to why the more direct and straight forward reading of the court’s words somehow are not what they are.

    The point of an emulated device without intention to turning it into a physical device is simply dust-kicking. The point IS that the machine component of software does IN FACT change the machine. You simply cannot get to the end of an “emulated” device without the component and manufacture in its own right of software. If you could, then you would not have a new machine, and you would be able to use the patent doctrine of inherency and have that non-new machine “already in there” in the old machine. Your path leads to the non-sense of all future invention by way of software must already somehow “magically” be present.

    That is just not reality.

  37. Joachim Martillo October 4, 2015 9:08 pm

    As I pointed out, I have the impression that step back and night writer are reading “such” in the Alappat decision as “any”. This reading changes the holding immensely.

    As for the insertion of “adapter cards” etc. into my discussion, I have to note that lawyers and engineers just conceptualize inventions differently. As a PHOSITA, the written description of Diehr ‘142 seems to describe a prototype in which a general purpose computer substitutes for a turnkey or embedded device. The actual interfacing was simply not relevant to specifying the metes and bounds of the invention. For this reason Diehr wrote method claims that to greater or lesser extent reference a digital computer but don’t actually describe how the computer or turnkey mold controller interfaces to temperature probes or to the mechanicals that open the molds.

    Alappat claims a rasterizer circuit/device that is a component in an oscilloscope. The court notes that metes and bounds of the claim encompass a general purpose computer programmed to emulate the rasterizer circuit but holds that such programming transforms the general purpose computer into a special purpose computer when so used. (I would have written special purpose device to indicate that the next step might be to develop a circuit with a PLD and that the 3rd step might be to generate an ASIC.) As a engineering scientist I am not particularly happy with how the court phrased the holding, but I think I understand what the court is trying to say.

    That court is holding that it has no problem with a claim directed to a hardware (possibly integrated) circuit or to a general purpose computer programmed to emulate that hardware circuit.

    Only a small percentage of programs for general purpose computers are meant for physical circuit emulation. The ability to direct a patent-eligible claim to physical circuit emulation hardly implies that all software programs should be patent-eligible.

  38. Anon October 4, 2015 10:43 pm

    Joachim,

    No.

    You are reading too much into the “must be physical circuit” and losing sight of the equivalence fact.

    Ask yourself with software – can this be duplicated in hardware (or ASIC)? You do not need the intent to replace a physical circuit per se and as such as you are doing.

  39. A Rational Person October 5, 2015 10:26 am

    Step Back@32

    To take your example into the macro world:

    If you have a black box attached to monitor and the black box causes the monitor to display a moving picture on the monitor with precision never before achieved:

    If the black box is opened and reveals a series of switches that are manipulated by a mechanical device to produce images on the monitor, everyone agrees the black box is a patent eligible device.

    If the black box is opened and reveals vacuum tubes that are used to produce images on the monitor, everyone agrees the black box is a patent eligible device.

    If the black box is opened and reveals transistors on a circuit board that are used to produce images on the monitor, everyone agrees the black box is a patent eligible device.

    If the black box is opened and reveals integrated circuits that are used to produce images on the monitor, everyone agrees the black box is a patent eligible device.

    But if the black box is opened and a general purpose computer is revealed and the images are produced by the operation of special software on the general purpose computer, Joachim Martillo and others appear to argue that the black box should not be patent eligible.

    To date, no one has provided any explanation as to why that is a rational result under 35 USC 101 based on what 35 USC 101 explicitly states is patent eligible.

  40. Joachim Martillo October 5, 2015 12:19 pm

    A Rational Person #38:

    I was saying something different. The court in Alappat holds that a legitimate claim can be directed to the physical circuit or the software emulation of that circuit.

    The decision also describes why the judges felt the Alappat claims differed from those of Benson. There may be an aspect of hairsplitting. I recommend that inventors and prosecution agents make it very clear that claims are directed to something not effectively calculable in the Church-Turing formalism.

  41. step back October 5, 2015 1:35 pm

    Gene, still awaiting release from spam jail for yesterday’s comment which linked to youtube of “White Rabbit” lyrics (Go Ask Alice) but also explained quandary of computer loaded with new song versus computer loaded with new motor control code. Thanks.

  42. Anon October 5, 2015 4:01 pm

    Joachim,

    What you are saying is just not correct (either from a semantics, linguistic, factual, or legal viewpoint).

    You seem stuck on a one-way equivalence viewpoint and there just is NO reasoning to support just such a “only one way” view.

  43. Alan Gardner October 5, 2015 5:53 pm

    Gene,

    I’m late to the game here, but I’m reminded of the system I studied in school concerning the engineering of the F/A-18 Hornet. The aircraft had a design requirement for weight off the nose gear at 120kts for catapult launch, but failed this during initial flight testing. No amount of horizontal stabilizer deflection would solved the problem. The failure would have cost the manufacture a significant sum to redesign the tail of the aircraft to satisfy the requirement if it not for the fortunate characteristics of the aircrafts other design features. One was a fly-by-wire aircraft control system, and two was the slight outward pitch of the vertical stabilizers. With the combination of the two, the engineers were able to direct the flight control system to inwardly deflect the vertical stabilizer’s control surfaces during takeoff to effectively increase the rear downforce and satisfy the weight off wheel requirement for the nose gear. An elegant, efficient, and innovative solution.

  44. Joachim Martillo October 6, 2015 3:02 am

    Why is my viewpoint one-way directed? The Benson claims appeared to be directed either to a physical circuit or to software, but the Court found them only directed to the algorithm.

    It is conceded that one may not patent an idea. But, in practical effect, that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that, if the judgment below is affirmed, the patent would wholly preempt the mathematical formula and, in practical effect, would be a patent of the algorithm itself.

    Alappat identified a substantial practical application for the hardware and equivalent software beyond the clocking of signals/data through the system whether the system was a digital circuit or a program on a digital computer. Benson did not.

    I found IN RE WARMERDAM: WHEN IS A SOFTWARE PROCESS TOO ABSTRACT TO MERIT PATENT PROTECTION? helpful in thinking about epistemological issues in patent law.

    In the case of Gottschalk v. Benson, the author could have asked, “When is a hardware process too abstract to merit patent protection?”

    The judges in these cases except perhaps for “In Re Warmerdam” seem to be on the right track. While these judges may express themselves excellently in their own art, they are having some problems with the specialized vocabulary of epistemology or of engineering science, and therefore do not express themselves clearly for the whole target audience of their opinions.

  45. Anon October 6, 2015 6:39 am

    The judges in these cases except perhaps for “In Re Warmerdam” seem to be on the right track.

    A value judgement that belies the fact that Benson was poorly reasoned (you give far too much credit to the justices “in their own art.” You also omit the bi-directionality within Benson of the rather important “We do not so hold

    For all of your command of language and technology, you seem to have a general lack of seeing the big picture. Yes, “substantial practical application” is an important part of 101 – but that is quite separate from the statutory category part of 101, n’est-ce pas?

  46. Joachim Martillo October 6, 2015 12:24 pm

    From the standpoint of epistemology, the framework created by the courts looks not unreasonable and quite symmetric. One can phrase a claim in terms of digital hardware and yet only claim an ineligible algorithm whether implementation is performed in software or hardware (Benson).

    One can phrase a claim in terms of digital hardware and it can be eligible even if implementation is possible in both hardware and also software. (Alappat)

    The courts have taken into account that in many cases software can be equivalent to hardware.

    I consider the decisions in Warmerdam and DDR Holdings to have been in error.

  47. Anon October 6, 2015 10:27 pm

    Your first paragraph is not quite correct Joachim – as already mentioned, the Benson case has an important quote: “We do not so hold.”

    I do not know (for sure) what you mean by “digital hardware.”

    I do not know what you mean by “many case” when you say “in many cases software can be equivalent to hardware.” Software IS equivalent to hardware. Show me software that is not meant to be a machine component and I will show you someone who does not understand what software is.

  48. Joachim Martillo October 7, 2015 7:28 am

    It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a “different state or thing.” We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. We do not so hold. It is said that we have before us a program for a digital computer but extend our holding to programs for analog computers. We have, however, made clear from the start that we deal with a program only for digital computers. It is said we freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology. Such is not our purpose.

    ~(all programs servicing a computer are patent-ineligible)

    (there exists at least one program serving a computer that is patent-eligible)
    and not
    (any program servicing a program is patent-eligible)

    [even if a claim directed to that program might not be patentable for 102 or 103 reasons]

    Anyway, here is claim 8.

    “The method of converting signals from binary coded decimal form into binary which comprises the steps of”

    “(1) storing the binary coded decimal signals in a reentrant shift register,”

    “(2) shifting the signals to the right by at least three places, until there is a binary ‘1’ in the second position of said register,”

    “(3) masking out said binary ‘1’ in said second position of said register,”

    “(4) adding a binary ‘1’ to the first position of said register,”

    “(5) shifting the signals to the left by two positions, ”

    “(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary ‘1’ in the second position of said register.”

    That claim could read on a software program or digital hardware. It is certainly possible to create a claim that can be directed toward digital hardware and that is 101 invalid by failing to specify sufficient metes and bounds.

    Furthermore, some programs are more like the pattern cards for a Jacquard Loom or a music roll for a player piano. Should such “programs” be patent-eligible?

    The following patents, which are directed to pencil-and-paper calculations according to certain financial algorithms, should never have been granted.

    Portfolio optimization by means of resampled efficient frontiers
    US 6003018 A

    Portfolio rebalancing by means of resampled efficient frontiers
    US 6928418 B2

    Portfolio rebalancing by means of resampled efficient frontiers with forecast confidence level
    US 7412414 B2

    Portfolio optimization by means of meta-resampled efficient frontiers
    US 7624060 B2

    Nevertheless, I could assist a patent prosecutor to write business/financial method claims that would be valid under 101 and that would not be effectively computable within the Church-Turing framework.

  49. Joachim Martillo October 7, 2015 7:31 am

    [oops, I forgot I could not use angle brackets in the comment box]

    It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a “different state or thing.” We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. We do not so hold. It is said that we have before us a program for a digital computer but extend our holding to programs for analog computers. We have, however, made clear from the start that we deal with a program only for digital computers. It is said we freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology. Such is not our purpose.

    ~(all programs servicing a computer are patent-ineligible)
    ==
    (there exists at least one program serving a computer that is patent-eligible)
    and not
    (any program servicing a program is patent-eligible)

    [even if a claim directed to that program might not be patentable for 102 or 103 reasons]

    Anyway, here is claim 8.

    “The method of converting signals from binary coded decimal form into binary which comprises the steps of”

    “(1) storing the binary coded decimal signals in a reentrant shift register,”

    “(2) shifting the signals to the right by at least three places, until there is a binary ‘1’ in the second position of said register,”

    “(3) masking out said binary ‘1’ in said second position of said register,”

    “(4) adding a binary ‘1’ to the first position of said register,”

    “(5) shifting the signals to the left by two positions, ”

    “(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary ‘1’ in the second position of said register.”

    That claim could read on a software program or digital hardware. It is certainly possible to create a claim that can be directed toward digital hardware and that is 101 invalid by failing to specify sufficient metes and bounds.

    Furthermore, some programs are more like the pattern cards for a Jacquard Loom or a music roll for a player piano. Should such “programs” be patent-eligible?

    The following patents, which are directed to pencil-and-paper calculations according to certain financial algorithms, should never have been granted.

    Portfolio optimization by means of resampled efficient frontiers
    US 6003018 A

    Portfolio rebalancing by means of resampled efficient frontiers
    US 6928418 B2

    Portfolio rebalancing by means of resampled efficient frontiers with forecast confidence level
    US 7412414 B2

    Portfolio optimization by means of meta-resampled efficient frontiers
    US 7624060 B2

    Nevertheless, I could assist a patent prosecutor to write business/financial method claims that would be valid under 101 and that would not be effectively computable within the Church-Turing framework.

  50. Joachim Martillo October 7, 2015 4:02 pm

    In #50

    (any program servicing a program is patent-eligible) was supposed to be
    (any program servicing a computer is patent-eligible)