50 Years of Controversy Rages On: A Closer Look at Computer-Implemented Inventions

By Martin Goetz
October 11, 2016

Preface: This article reviews the 50 years of controversy on software patents. Because there continues to be a cloud over computer-implemented inventions, the article makes the argument, through indisputable facts, that computer-implemented inventions are no different from inventions that have been patented since the beginning of the Patent System in 1790. Finally, the article reviews three innovative patented computer-implemented inventions and explains why the phrase “software patent” is meaningless.

__________

computerworld

Computerworld, June 19, 1968. Graphic used with permission, courtesy of Computerworld.

Prior to the advent of the general purpose digital computer in the 1950’s IBM dominated the punch card industry. They employed many IP lawyers and often led the US in the filing of patents each year. Many of these patents, like the IBM Punched card Sorting Machine, were electro-mechanical machines containing electronic circuity.

By the mid 1950’s and into the  1960’s, IBM started replacing, or complementing  punch card equipment, with general purpose digital computers and bundled a limited number of computer programs with their computer. Much of that software was developed under contract by a handful of independent software companies that had formed in the 1950’s and early 60’s. Applied Data Research (ADR), my former company, was started in 1959 and was one of those companies.

What goes around comes around!

In 1965 when the term “computer programs” were not yet called “software”, President Johnson was asked by a Senate Subcommittee to establish “The President’s Commission on the Patent System”. A final report called “Report of the President’s Commission on the Patent System” provided thirty five recommendations. One of their recommendations was on computer programs.

As shown on page 12 the recommendation on computer programs was:

The classes of patentable subject matter shall continue as at present, except:

A series of instructions which control or condition the operation of a data processing machine, generally referred to as a “program” shall not be considered patentable regardless of whether the program is claimed as: (a) an article, (b) a process described in terms of the operations performed by a machine pursuant to a program, or (c) one or more machine configurations established by a program.

On Page 13 under 3. it added…

Programs: Uncertainty now exists as to whether the statute permits a valid patent to be granted on a program… It is noted that the creation of programs has undergone substantial and satisfactory growth in the absence of patent protection and that copyright law for programs is presently available.

That proposed recommendation, which was never enacted by Congress, set the seeds for this 50 year controversy.

It is unbelievable that the Commission concluded in 1966 that “the creation of programs has undergone substantial and satisfactory growth”. At that time there was no software industry and IBM and other computer companies were bundling a limited number of computer programs with their mainframe computers. For a detailed review of how IBM in the 1960’s and early 70’s tried to inhibit the emergence and growth of the independent software industry click and read Pages 233 and 234 from the book Information Technology Law: The law and Society.

In 1965, ADR on my behalf filed a patent application for a Sorting System and I received the first software patent in 1968 for an innovative way to sort large amounts data on a computer that had tape drives that could only read and write data in a forward direction (See Patent # 3,380,029). Computerworld, a computer publication ran a headline on page 1 “First Patent issued for Software, Full Implications Are Not Yet Known.” The Sorting System patent was dubbed a software patent but it could also have been a computer hardware patent. It was dubbed a software patent solely because the preferred implementation (the disclosure) was a logic chart and diagrams (which was recognized by the patent office as a proper disclosure). My Sorting System patent would not have been controversial if the disclosure had been electronic circuitry since there were many hardware patents for sorting data on special-purpose computers and special apparatus.

Fortune magazine in their August 1968 article “Unprecedented Patent” wrote “It was the first software patent granted in the U.S.—and it touched of a thundering controversy.”

From 1968 through 1980 ADR filed Amicus briefs in the Prater & Wei, Benson, Johnson, Flook, and Diehr cases in which we argued that a machine process patentable in hardware (electronic circuitry) is equally patentable in software. Here is exactly how we posed a “Question of Law” in our 1980 Diehr brief:

Whether a computerized machine or industrial process that is patentable subject matter under 35 USC 101 when constructed with a hardware program (wired circuits) would also be patentable subject matter when constructed with a stored computer program (i.e., firmware or software)?

Had that question been debated publicly, instead of “Is Software Patentable?” the controversy may have ended much earlier.

As the years rolled by, and with the advent of the PC and computer chips, more and more patent applications had software descriptions in the Specifications section of the patent application. By 2011, patents related to software made up more than 50% of all issued patents” according to a 2013 GAO Report.

Fast forward to October 2016. Unfortunately, the controversy continues.

For instance, in the recent article The Current State of Computer Software Patentability the author concluded…

Each of the above four post-Alice cases (DDR holdings v. Hotels, Enfish v. Microsoft,  Bascom v. AT&T, and McRO v Bandai received tremendous attention from the intellectual property community because each provided helpful guidelines to determine (and assert) patent eligibility for software inventions. It has been, however, a “mixed bag.” Each of the four cases garnered hope that intellectual property protection for software was available within a rather bleak-looking landscape.

And in the latest  Federal Appeals Court decision in Intellectual Ventures  v. Symantec Judge Mayer’s, in his concurring opinion, wrote (Page 6)…

Most of the First Amendment concerns associated with patent protection could be avoided if this court were willing to acknowledge that Alice sounded the death knell for software patents.

Also see Software patents are ‘deadweight loss’, says Federal Circuit for additional comments by Judge Mayer.

But such hysteria should not discourage inventors that describe software as part of the Specifications in their patent application. The seven facts below should give those patent seekers the confidence that if their application contains a true invention, along with a software description in its disclosure, it would not be the basis for denying a patent by the Patent Office

Fact 1: Since the formation of the patent system in 1790, one can only patent inventions, not software or electronic circuits

Fact 2: Computer programs and electronic circuitry diagrams can be protected by copyright, not by patents.

Fact 3. Computer programs, electronic circuitssteam powerwind energy, and solar energy, — to name a few — are ways to implement (disclose)  an invention.

Fact 4: Electronic circuits (hardware) and software programs are logically equivalentIn Hardware/Software Tradeoffs: A General Design Principle? the abstract states “the decision to put certain features in hardware and others in software is based on such factors as cost, speed, reliability and frequency of change and “Today’s software is tomorrow’s hardware, and vice versa.”

Fact 5: The USPTO 1996 publication Examination Guidelines for Computer-Related Inventions  stated “the procedure office personnel will follow when examining applications drawn to computer-related inventions and are equally applicable to claimed inventions implemented in hardware or software.”

Fact 6: In the 1981 Supreme Court case the Court wrote “the claims of Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer

Fact 7: In the Alice unanimous Supreme Court 2014 decision  the Court wrote that  “inventive concepts are the basis for a patent” and “improvements to another technology or technical field” and improvements to the functioning of the computer itself” were examples of patentable subject matter.

Here are three examples of three computer-implemented inventions that are very different. The three could be designated as “computer-implemented inventions” or they could simply be described as a digital mouse patent, a medical device patent and a voice patent. What they all have in common in that there is a software element in the Specifications of each patent.

Example 1: The Digital Mouse Patent: This example,  patent US7683883, was issued on a 3-D mouse and game controller. In the Specification (the disclosure) the inventor states “While this invention is described in terms of the best mode for achieving this invention’s objectives in a particular application, it will be appreciated by those skilled in the art that variations may be accomplished in view of these teachings without deviating from the spirit or scope of the present invention. For example, the present invention may be implemented using any combination of computer programming software, firmware, or hardware.”

So should this invention be designated as a software patent, a firmware patent, or a hardware patent?  Obviously, what is significant is that it is a real invention; that it is a contribution to the state-of-the –art; and that the claims are appropriate for the claimed invention. In the US as long as there is a proper disclosure on how an invention can be implemented it is acceptable to the patent office if the disclosure is adequate for one skilled in the art. And under the USPTO guidelines the Specification in the patent application need not be even be the best mode for implementation. See “Best Mode Requirement

Example 2: The Medical Device Patent. In this example of the Argus II Retinal Visual Prosthesis  invention, the specification included a pair of glasses attached to a video camera unit and a computer and software. A miniature video camera housed in the patient’s glasses sends information to a small computer worn by the patient where it is processed and transformed into instructions transmitted wirelessly to a receiver that is surgically implanted in and around the eye. The signals are then sent to an electrode array, attached to the retina, which emits small pulses of electricity.  These electrical pulses are intended to bypass the damaged photoreceptors and stimulate the retina’s remaining cells to transmit the visual information along the optic nerve to the brain.  Photoreceptors are light-sensitive cells (neurons) in the retina that convert light energy to neural impulses. The photoreceptors are as far as light gets into the visual system. The invention was awarded a special patent #8,000,000 by the USPTO and Time Inc. named the Argus II artificial retina one of the best 25 inventions of 2013.

Although software is mentioned in the Specification, that software was not the inventive part of invention and was not described in any detail in the disclosure of the Artificial Retina invention. So there is no reason to call this patent a software patent or a computer-implemented invention.

Example 3: The Voice Patent: Back in November 2012 Microsoft stated in a press release “Microsoft researchers have demonstrated software that translates spoken English into spoken Chinese almost instantly, while preserving the unique cadence of the speaker’s voice—a trick that could make conversation more effective and personal.” In 2016 Microsoft received a patent for Voice Generation with Predetermined Emotion Type which I believe reflects the “unique cadence of the speaker’s voice” and was based on the extensive research in their research labs, A shortened description of this patent shows the complexity of this computer-implemented invention.. But this is clearly a computer-implemented invention when it is stated “The disclosure relates to computer generation of voice with emotional content.”

Hopefully, these three examples will demonstrate that when one gets a patent, it is not on a program and it is on an invention.

The lower Courts and the Mayo test have exposed many invalid patents that were issued over the years where there was no invention—and just the obvious use of a computer to automate an application or process. And in a University of Maryland Software Patents: A One-Year Review of Alice v. CLS Bank study “out of roughly 240,000 current patents in force related to computer-implemented inventions as of 2015, about 199,000 of those would likely be invalid patents under Alice, leaving about 41,000 valid patents. In December 2014 the Patent Office gave guidelines and examples of what is patentable and what is not patentable and in July 2015 it came out with an additional update on subject matter eligibility. Also see The USPTO Strikes Back: Interim Guidance Update Promotes Software Patent Eligibility.

So there is no reason to believe that today’s patent examiners are rejecting new patent applications that may have a software description in the disclosure at any greater rate than non-computer implemented applications because of their requirement to use the Mayo test. And In recent testimony before a House Judiciary subcommittee USPTO Director Michelle K. Lee said her office has taken numerous steps to improve the work of its more than 8,000 patent examiners.

As far as the Software Industry, it is alive and well. According to Statista,  “In 2010, the packaged software vendors had revenue of 316 billion U.S. dollars worldwide.” For 2015 they are forecasting 430.9 billion dollars.

The Author

Martin Goetz

Martin Goetz is a pioneer in the development of the commercial software industry, and is known within the industry as “the Father of Third Party Software.” He is also widely regarded as the inventor on the first software patent ever granted by the United States Patent and Trademark Office, U.S. Patent No. 3,380,029.

PBS Digital Studios profiled Goetz and his pursuit of the first software patent in the YouTube video below.

In 2007, Goetz was the “Unsung Innovator” of the computer industry by ComputerWorld. Goetz is also a member of the Mainframe Hall of Fame.

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 26 Comments comments.

  1. Night Writer October 11, 2016 10:44 am

    What is shocking to me is the incredible ignorance of the CAFC judges and the SCOTUS justices.

    I think a key point is the equivalence of circuits and software solutions.

    I also think that R. Stern who largely wrote Benson is mostly responsible for the mess. Benson is the heart of all evil of patent law.

  2. step back October 11, 2016 11:55 am

    Martin,
    Your post comes at a well timed point, as the 6 horsemen of the patent apocalypse strike yet again:

    10-11-2016 FAIRWARNING IP, LLC v. IATRIC SYSTEMS, INC. [OPINION] Precedential (101)

    It seems that nothing involving a computer is patent “eligible”.

  3. Night Writer October 11, 2016 12:25 pm

    What is so strange about all this too is that the software is becoming more and more intelligent, e.g. driving software.

    How in the world could anyone imagine that software to drive a car is not an invention?

    Just really medieval.

  4. A Rational Person October 11, 2016 12:52 pm

    Night@3

    How in the world could anyone imagine that software to drive a car is not an invention?

    And yet Justice Kennedy thinks that such software could be produced by a 2nd year engineering student over a weekend . . . .

    What a technological ignoramus.

    There really need to be term limits for justices if for no other reason than to ensure that their knowledge of technology is no more than 40 or so years out of date.

  5. EG October 11, 2016 2:11 pm

    I concur in A Rational Person’s remarks.

  6. Ted Weisz October 12, 2016 3:53 pm

    As a practitioner for 35 years, I find this essay fascinating. However I find the following statement puzzling and leads me to believe that the author is out of touch with reality:”So there is no reason to believe that today’s patent examiners are rejecting new patent applications that may have a software description in the disclosure at any greater rate than non-computer implemented applications because of their requirement to use the Mayo test.”
    I and many other people I know have dozens of applications that have been rejected purely because their claims are implemented by software and therefore they are considered nothing more than abstract ideas.

  7. angry dude October 12, 2016 10:20 pm

    Current patent strategy employed by big tech corps and even anti-software-patent folks like Mark Cuban:

    A combination of trivial hardware arrangement and some “computer logic” which is not disclosed at all…

    Voila, a winner, a “hardware product” patent invincible under Alice PLUS a hard-to-break trade secret on computer logic … aka embedded software

    I’be seen countless examples of these “future product” patents (entirely based on undeveloped and undisclosed software algorithms) from the likes of apples and googles

    Amen, brothers and sisters

    This “patent system” needs to be burned down

    Vote for Trump

  8. Alex in Chicago October 13, 2016 1:02 am

    The name of the game, is still the claim, which is why most of the high-profile cases get shot down.

    Many (myself included) are not fond of the current 101 approach because it allows sections 112 and 103 to continue to be poorly interpreted and serves as a kind of band-aid because previous precedents prevent those from serving their proper role (and PTO practice is also implicated). However, the issue in all the prominent 101 cases that the patentee loses he would also have lost under a proper 103 and/or 112 bar, and that is why the law evolves this way, because people with bad claims are the ones who make it to the top of our appeals system.

  9. Night Writer October 13, 2016 9:07 am

    @8 Alex and 102. If the SCOTUS finding of fact that Alice is a fundamental economic principle is true, then 102 would have done the trick for the Justices.

  10. Mark Nowotarski October 13, 2016 2:34 pm

    Ted @6. What art units are those is in? Are any outside 3620, 3680 or 3690 (i.e. business methods)?

  11. Alex in Chicago October 13, 2016 4:11 pm

    @NW I think that a fundamental economic principle + computer implementation is a 103. Its entirely possible to describe your invention as a way to implement an fundamental economic principal, and not encounter these kinds of problems.

    The issue is that the claims are directed to the economic principle + steps necessary for all implementations of that principle. The claim is de facto obvious because if you know how computers work and you know what the principle is (or in Mayo if you know how doctors practice and know the correlation) the claim will encompass that combination. The individual implementations are, IMO, true innovations in a lot of the cases, but the claims themselves are not directed to that, and until someone with claims like that gets to SCOTUS, 101 rejections will continue to expand in scope instead of contracting or stagnating.

  12. Anon October 13, 2016 6:39 pm

    Alex,

    The problem you identify is captured by the words “directed to.”

    When you “gist” and leave behind what is actually claimed (and/or you do not treat the claim as a whole), THEN you run into mischief.

    Remember please that Congress already spoke as to exactly whom has the say as to what the invention “IS.”

    And Congress did not give that power to the courts.

  13. Alex in Chicago October 14, 2016 12:42 pm

    @ anon

    Actually, I do not do that, and the “gist” defense is a caricature of the way 101 cases work. When you look at Mayo, or you look at Alice, the independent claims do not have a non-obvious step once you realize the so-called “principle” is prior art, and that there’s always a motivation to do things on the internet, or for doctors to cure patients.

  14. Anon October 14, 2016 1:27 pm

    Alex – you ARE doing that very same caricature thing (and employing a Point of Novelty in the 101 sense).

    Sorry, but no matter how you may wish otherwise, that is in fact what you are doing.

  15. step back October 14, 2016 3:12 pm

    Alex @13

    The statute, 35 USC 101 does not say “subject to the whims of and gibberish spouted by SCOTUS”.

    It says “subject to the conditions and requirements ***of this title.***”

    Mayo and Alice are anti-science insanity based on the SCOTeti being hoodwinked by the so called “friends” of the court (amici curie).

    Biotech does not involve walking through a jungle looking for bananas to pluck off of trees. There is no such thing as a generic computer. Who came up with that ridiculous term anyway? If you believe in it, please reformat your hard disk on a daily basis. Otherwise you’re just a poser.

  16. Alex in Chicago October 14, 2016 3:41 pm

    See, you are fighting against fake positions that I didn’t even take.

    I said: This will continue happening in 101 cases until the problem I have identified is fixed.

    You are too busy being angry at reality that you don’t even recognize helpful suggestions.

  17. Anon October 14, 2016 5:56 pm

    Alex,

    You are too busy denying what you are doing to realize that your suggestions were not – in fact – helpful.

    Trying to be “not mad” at a situation that calls FOR being mad is improper.

  18. angry dude October 14, 2016 7:31 pm

    “generic computer” should be written on a tombstone of US Patent system

    One can only marvel at the ignorance and idiocy of scotus justices

    Amen, brothers and sisters

    Vote for Trump

    Let’s burn it down…

  19. Night Writer October 15, 2016 8:31 am

    If the term “steel” were used like “generic computer” is being used now by the patent courts, then no item that was made of steel would be eligible for patentability. Got new a new brake system for a car? Sorry that is steel, which is a basic tool long know.

    @Alex: you are right that it would require 103 and findings of fact and that is why the SCOTUS created Alice. It allows any court to invalidate a patent with no findings of fact and at any stage of the litigation. It is really equity. Saying if the judge doesn’t like the claims, then go ahead and invalidate the claims.

    Clearly unconstitutional.

  20. Anon October 15, 2016 8:58 am

    “Generic computer” is using the exact same “logic” as saying that you have configured something out of protons, neutrons and electrons – or “generic fundamental particles.”

    Except the computer is a machine and any improvement to that machine is permitted by 101.

  21. step back October 15, 2016 1:51 pm

    Anon @20,

    After posing the question (what is a “generic computer”) I went on Google searching for an answer. What came back is that a “generic” computer is not a computer sold under a brand name (a trademarked name?).

    Is that what the SCOTeti meant?
    Who knows?

    The term “generic computer” is as equally vague as is the term “abstract idea”.

    Somewhere deep in the brains of our Magnificent 8 there lurks a fantastical universe filled with coffee shops populated by 2nd year engineering students who have nothing better to do then wait for Kennedy J. and Breyer J. to walk in with their “abstract” ideas, mouth them off in one or a handful of words (“solvency” you see? solvency, chits for gold, what King Tut did) and then to run off to their “generic computers” to make it so over weekend’s last gleaming.

    Oh yeah. That fantastical universe is also filled with fundamental building blocks and jungles. Jungles that one can walk through to find pharmaceutically effective bananas to pluck off of trees on an I know it when I see it basis.

    Oh what an amazing place it is.

  22. Night Writer October 17, 2016 10:39 am

    “Generic computer” — I think– is actual important to understand. What this means to those skilled in the art is a machine that operates on a common set of operations to allow the machine to emulate another machine. The fact is that all information processing can be done on a special purpose chip, which is much faster. The generic computer is a translation of the special purpose chip into a general language at a huge cost to the efficiency. They are equivalent.

    Moreover, this is closely tied to all circuits. All circuits can be converted to A/D input converters, a “generic computer” plus program, and A/D output converts.

  23. Anon October 17, 2016 11:17 am

    Sounds like “generic” basic particles of matter… (the protons, neutrons, and electrons).

    Now what you do with these basic items – the configurations of these items are an altogether different kind of thing, would you not agree?

    The problem of course is that this aim to use “generic computer” quite swallows ALL improvements to the machine – in direct contradiction to the actual words of Congress in the Statute.

    What is being attempted is logically the same thing as removing the configurations of protons, neutrons and electrons because the basic particles are not eligible.

    The absurdity should be self apparent.

    Should be.

    And yet, the “logic” is still attempted (and attempted from a purely philosophical reason, having nothing to do with the facts of the particular art units affected, nor the law as it is meant for the field of innovation in general.

  24. Night Writer October 17, 2016 2:17 pm

    @23 Anon: I agree with you. Generic computer is misused by the judiciary.

    One could say that if you build it with a hammer or any known tool that it can’t be eligible for patentability. It is the same argument the judges are using. Just bizarre.

  25. step back October 17, 2016 5:13 pm

    Judges gone wild!
    🙂

    https://patentu.blogspot.com/2016/10/subject-to-legislative-whims-of-judges.html

  26. Anon October 17, 2016 7:49 pm

    Sadly step back, you are correct.

    The hubris of the cloistered Supreme Court judges has become a problem in and of itself. Look at the background of all of the Justices, note their commonalities, and note how removed from the common man (let alone the common technical man, or the common innovative man).

    We need LESS ivy-league, liberal mindset, and more street smart and blue collar hard work mindset.

Our website uses cookies to provide you with a better experience. Read our privacy policy for more information.Accept and Close