Writing a Software Patent Application

By Gene Quinn
October 15, 2018

Collecting the information necessary to prepare a patent application covering a computer related invention can be quite challenging. Typically, most computer related inventions today relate at least in some way to software, which is at the very core of the challenge. This software challenge stems from the fact that the software code is not protected by patent law but is instead protected by copyright law. This is because software code is expressive, written in a language that can be translated into machine understandable instructions. As such, the code is the expression of the invention, not the invention itself.

The invention when one is talking about software resides in the uniqueness of the set of functionalities that will direct operation of a particular machine or system. That uniqueness can be with respect to how the information is handled, stored, compressed, or transferred. The uniqueness resides in how the software operates, not the particular code that tells the machine what to do. The invention that will be protected in a patent – assuming the innovation is patentably unique – is language independent.

The code is not protected, but rather the structures and processes that deliver the functionality are what is protected. This means that the description needs to be one that can be replicated by others regardless of how they choose to write code to accomplish the necessary tasks. It also means it is preferable to approach this task of innovating the way an engineer would approach the task, rather than simply sitting down and writing lines of code, stringing them together without documentation. The documentation, the explanation, the story of the technology and innovative advances and improvements is what will make all the difference when seeking a patent on a software related invention. Millions of lines of undocumented code are a nightmare from a patent perspective, not to mention a scalability perspective.

A patent does not need to be a blueprint, but it needs to direct. For example, you do not need to provide the code for the scripts, although that is certainly one way to make sure they are described adequately, and perhaps something you may want to consider if you have a working prototype that you want to protect (more on this later).

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Generally speaking, the goal is to provide enough description so that someone who is “skilled in the art,” which is a legal term that refers to those who would be expected to possess the knowledge and understanding appropriate to comprehend the invention, can make and use the invention after reading the patent application. In order to satisfy the patent law description requirement, the explanation of the software in a patent application must give a programmer enough information to be able to sit down and know how to write the code having only read the description contained in the patent application.

Think of the process in this way. When someone famous wants to write an autobiography or memoir they frequently sit down and tell an accomplished writer who then writes. The accomplished writer is the computer programmer. The programmer will not write anything they are not explicitly told, just like the memoir writer. The writer does not make things up, so all the information necessary for writing must be provided. The word choices and how the story will be told will be decided by the writer. Similarly, when you have an invention that relates to software you need to provide all of the necessary information about what needs to be accomplished so that the computer programmer will not need to make things up, but instead will be able to simply follow directions. If this is the case the computer programmer is not an inventor because they are merely following the instructions and directions of someone (i.e., the inventor) who maintains mental dominion over the invention. In other words, the inventor does not need to micro-manage the writing of the code, but the inventor must give enough detail so that the writing of the code will be a purely ministerial matter.

Obviously, when an accomplished computer programmer sets out to write code, even if they have the most detailed specifications provided by the inventor, the computer programmer will interject their own creativity. If the computer programmer interjects creativity that rises to the level of what the law considers conception, the computer programmer would become a co-inventor. Therefore, it is always wise for inventors who have engineered the overall system architecture to enter into agreements with those they hire to code making it clear who will own any inventions.

Assuming you have an agreement in place that defines ownership of intellectual property rights, particular invention rights (i.e., patent rights), consider sitting down with the person who will be coding the invention. The inventor and programmer can collaborate to create the technical document, sometimes called a “design document,” that will give the programmer all the information necessary to start the programming of the code.

When you sit down to collect the information necessary to create the “design document” you have to keep three things in mind. Any good patent application that covers a software related invention will need to put forth three specific pieces of information. First, you need to describe the overall computer architecture of the system within which the software will exist. Second, you need to prepare a single flowchart that depicts the overall working of the software. Third, you need to prepare a series of flow charts that show with painstaking detail the various routines and subroutines that together connect to create and deliver the complete functionality of the computer system as enabled by the software.

Overall Computer Architecture

Increasingly it is becoming more and more difficult to obtain a patent on software related inventions. The cases from the Federal Circuit and the Supreme Court say that having tangible components in the invention do not alone make an invention patent eligible. That is all well and good, but let’s not kid ourselves – the tangible matters.

Machines have been patentable in the U.S. since 1790, and a faster machine has always been something that could be patented. It is hardly surprising that the Federal Circuit has over the past several years focused on the improvement being made. If you describe the technological improvement the innovation makes, and you claim that improvement you are within the safe harbor cases, which include Enfish, Thales Visionixand others.

Similarly, if you describe the technology at play from a system level viewpoint and claim that innovation you will be far more likely to overcome any patent eligibility concerns. This necessarily requires discussion of the tangible components, as well as a technological description of how everything is working together to achieve the solution.

Whether we like it or not, and whether the law actually specifically includes it or not, the Federal Circuit has adopted the European approach to patent eligibility of software. The software must provide a technical solution to a technical problem. The more that is explained about the tangible technology and how the technical solution improves functionality and/or solves the problems can only be of benefit. In fact, while tangible elements are not enough in and of themselves when presented in a disembodied way, done properly the incorporation of the tangible into the disclosure of the technology is absolutely the best practice. It is the answer and why those who have been filing solid patent disclosures haven’t had problems even with pre-Alicecases.

What this means is that any time you have a computer related invention you must describe the overall architecture of the system that will perform the desired function. Merely reciting the process steps in a way that is disassociated from the overall architecture of the system will not satisfy current patent disclosure requirements.

Master Flow Chart

Now that you have the overall computer architecture defined focus needs to shift to how it is that this computer system will operate to achieve the desired results. It is the software that will cause the system to operate as desired, so the software needs to be described with the greatest amount of detail possible.

Many times those who are new to drafting patent applications that relate to software will focus entirely on how the software is used from the perspective of the end user. This information certainly should be in any application, but it is not sufficient to describe things from the user’s perspective. As far as patent law is concerned, you should describe things from the user’s perspective, but such a description is not essential. The description that is essential is an explanation of how the software operates from the perspective of the computer, not the perspective of the user. This is a subtle but extremely important distinction. If you describe things only from the user’s perspective, you are not describing what happens on a technical level. How things happen might as well be black magic. The user doesn’t care how information is passed along, what calculations are made or how data is compared. All the user cares about is what they enter into various fields and that they get a predictable and accurate output. So, describing software from the perspective of the user is nice, and it is something that I always do to give context, but it is not something that is really very relevant insofar as the patent laws are concerned – at least not unless you are seeking to protect a Graphical User Interface or User Experience, which I’ll write about in a later article.

What you will need to do is explain how the software operates to achieve the desired results. In order to do this, it will be absolutely necessary for you to break down the software step by step so that a computer programmer will be able to create the code necessary. What this means is that you must describe the logic that the computer programmer needs to follow. Regardless of how you describe the logic to the computer programmer, the way this logic needs to be conveyed in a patent application is through the use of a flow chart. At this point you need to create a single flow chart that demonstrates the overall logic of the software, from start to finish. There is no need to make this flow chart such that it will explain everything. You are creating a master flow chart that will show the logic from broad, overarching point of view.

And if you think you can show logic without a flowchart you need to come to believe you are mistaken. Sadly, it seems that computer logic classes are not taught like they once were, or they are only taught in engineering or only to electrical and/or computer engineers. In any event, if you are unfamiliar with computer logic as course and/or have never read a computer logic text I suggest you try and find such a course at a local college. If you are an inventor in this space, or a practitioner who will be doing work in this field repeatedly, you must be familiar with the fundamentals of a basic computer logic class.

Routines and Subroutines

Finally, what you need to do is break down the master flow chart into as many smaller pieces as possible. Here you will provide the fine details as to how the software will accomplish the larger tasks. You really want a series of flow charts that now show the logic of the major routines and subroutines.

But some may be quick to point out that they previously did not have to submit flow charts when they sought software patents in years past. That may well be true, but times have changed. The algorithm cases say that it is immaterial whether one of skill in the art would understand the full invention from the disclosure provided, but rather what is required is that 100% of each and every algorithm must be disclosed. Now don’t panic. These cases deal with a particular claiming technique (i.e., means plus function claiming), not all claiming techniques. Still, it is easy to envision a day when this requirement is applied across the board in software patent cases. Thus, it is best practice to seek to satisfy this much stricter disclosure requirement regardless of the claiming techniques you envision using when you file the application. By so doing you will have opened up another avenue of claims that can be pursued, and you have created a much stronger patent application that will support numerous patent claims and can legitimately be the foundation of a patent portfolio moving forward. You should also have security against further creep in the law, the way we saw withAlice.

Thus, flow charts, pseudo code or even software code that describes the routines and subroutines can and should be included in what you file when you file a patent application that relates to software. The rules engine that defines the “if this then that” will become a critical component of your software and of your patent application, as was seen in McRo, where the presence of rules is what saved the claims to a lip synchronization invention that was truly remarkable.

Conclusion

Once all of these pieces of information are collected you are now ready to start writing the application. Alternatively, if you are going to hire a patent attorney to assist you now is the time to move forward.

 

Image Source: Deposit Photos.

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.

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 17 Comments comments. Join the discussion.

  1. gene October 15, 2018 12:54 pm

    I would keep in mind the ideas suggested by the following changes while drafting a software patent:

    “The invention when one is talking about software resides in the CIRCUITS [uniqueness of the set of functionalities] that will direct operation of a particular machine or system. That uniqueness can be with respect to how the MACHINE [information is] handleS[d], storeS[d], compresseS[d], or transferS[red] ELECTRIC SIGNALS. The uniqueness resides in how the software ESTABLISHES THE CIRCUITS [operates], not the particular code that tells the machine what to do. The invention that will be protected in a patent – assuming the innovation is patentably unique – is language independent !![.]”

    fun fact: a running computer program is comprised of voltage signals traveling along higher to lower voltage pathways. just like your toaster.

  2. Anon October 15, 2018 2:08 pm

    A fun fact:

    Three resistors in series and three resistors in parallel may weight the same, but the configuration makes all the difference.

  3. Rick Neifeld October 16, 2018 9:46 am

    Gene, you stated “as was seen in McRo, where the presence of rules is what saved the claims to a lip synchronization invention that was truly remarkable.” I note that, what the Federal Circuit stated was that it was the novelty of the claimed rules that enabled “the automation of further tasks” that resulted in their conclusion that the claims were not unpatentable for abstractness.

  4. Andy J October 17, 2018 9:16 am

    Despite a line of cases in the US Court of Appeals for the Federal Circuit (Digitech, Nuijten and Burnett) holding that signals are abstract, non-tangible and not patent eligible, these holdings are being challenged in a recently docketed Petition for Writ of Certiorari in the US Supreme Court (Burnett, 18-414).

  5. angry dude October 17, 2018 1:30 pm

    Who cares about obtaining “software” patents on methods and algorithms that can be hidden inside a compiled and in many cases encrypted executable binary or an ASIC ?

    Better tell us how to properly proceed with claims of patent infringement against huge SV tech behemoth if all you have is a final consumer product (e.g. IPhone) with all that stolen tech very carefully hidden inside and an army of lawyers ready to rip you apart for any minor non-compliance with pre-filing due diligence ?
    (not even talking about IPRs and sh1t like that)

    Or at the very least some huge commercial software package with sh1tload of code compiled and binary possibly encrypted too ?

    What r u gonna do if you r a patent holder ?

    How do you write patent infringement complaint if it has to be much more specific than pure allegations of infringement ?
    Before discovery is granted by a judge if you are that lucky
    These are internal algos, not some GUI stuff easy to figure out

    Huh ?

  6. Anon October 17, 2018 3:34 pm

    Andy J @ 4 – do you have a link?

    The closest I can find is: https://certpool.com/dockets/18-414

    The Petitioner is listed as pro se – greatly diminishing the chances of grant.

    The decision at the CAFC: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1234.Opinion.7-16-2018.pdf

    A quick view of that decision (per curiam) shows that the argument of a “new combination” was accepted as a “true fact,” but that the claims still resolved to be only a mathematical formula. This falls to Benson (even a cabined version of Benson).

    The pro se argument of ” my process is not a math process, but a programming process” did not obtain credence (the programming process was nothing more than programming the math). There was no “applied math” present in the claims.

    That being said, the decision at the CAFC is too broad at pages 7-8 (referencing the Digitech case), in that starting with data and obtaining a new form of data is something that uses “applied math” (for example, encryption).

    Page 10 is also interesting (in relation to ANYTHING that Mr. Iancu attempts): “The prosecution history of the ’286 patent is particularly relevant here. During prosecution, the examiner amended claim 1 and claim 12 (renumbered as claim 9 before issuance) by adding the additional feature to bring the claims in compliance with the § 101 standard applied at that time.

    Legal error is evident at the CAFC (elevation of a statement in a concurrence to have the power of a holding of the full court):

    the claims had a “useful, concrete and tangible result.” In re Bilski, 545 F.3d 943, 959 (Fed. Cir. 2008) (en banc).This standard no longer governs. Id. at 959–60 (concluding “that the ‘useful, concrete and tangible result’ inquiry is inadequate . . . .”); see also Bilski v. Kappos, 561 U.S. 593, 659 (2010) (Breyer, J., concurring) (“[A]lthough the machine-ortransformation test is not the only test for patentability, this by no means indicates that anything which produces a ‘useful, concrete, and tangible results,’ is patentable. This Court has never made such a statement and, if taken literally, the statement would cover instances where this Court has held the contrary.” (internal quotations and citations omitted)).

    The late Ned Heller at one time provided a powerful link to an article warning of the danger of elevating dicta into a holding, and this is a prime example of the CAFC doing just that.

    Page 11 also is not quite correct in: “We have reviewed Burnett’s remaining arguments regarding eligibility, and we reject them as both unpersuasive and applying legal standards that no longer govern or that govern outside of the context § 101. See, e.g., Appellant Br. at 32, 51 (citing this court’s decision in In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994), which was superseded by Bilksi v. Kappos, 561 U.S. 593 (2010)” as those that follow this legal line will reflect that the very first case at the CAFC following Bilski v. Kappos, 561 U.S. 593 (2010) reaffirmed that In re Alappat remained good law.

    But these are different legal arguments than the Section III items.

    It is perhaps just as well as Burnett fails to obtain cert – he seems to NOT be an able champion, and would likely do more harm than good.

  7. Nick October 17, 2018 8:52 pm

    Gene, Anon, or any patent practitioner:

    Do you think that going forward, software apps, which are especially prone to being ‘Napkin Inventions’, are going to require that code syntax be disclosed in the written description by the USPTO?

  8. Kenneth J Hughes October 18, 2018 12:57 pm

    Gene (or others): Could you cite some issued patents that you consider to be exemplary models of software patents? Are there any that have so impressively met the complex constraints of case law related to software that their study and emulation would be worthwhile? Thank you.

  9. Anon October 18, 2018 5:37 pm

    Nick,

    I do not think that such will “save” anything ( at least before those panels already convinced that “software” is not a function of “ware,” but is instead merely an abstract idea.

  10. Andy J October 19, 2018 9:17 am

    Reply to Anon @ 6 :

    The Petition articulates this argument in greater detail and can be found at :
    https://www.supremecourt.gov/search.aspx?filename=/docket/docketfiles/html/public/18-414.html

    Briefly, the CAFC holdings in Burnett, Digitech, and Nuijten radically alter admissibility of electronic data and electronically stored information (ESI). The Petition focuses upon the disagreement between the circuits regarding the admissibility of electronic data, GPS data and GEOCODE as tangible evidence under Federal Rules of Evidence, Rule 1001 (d). CAFC holds that electronic data and electronically stored information (ESI) are abstract and non-tangible. SCOTUS must resolve the legal disagreement concerning tangibility of GPS data and GEOCODE electronic data and electronically stored information (ESI) between the circuits so criminal and civil cases can use GPS data and GEOCODE electronic data and electronically stored information (ESI) as tangible evidence to identify location of crimes or real property disputes.

    This issue is fundamental, has significant implications for data as property, and warrants a grant of Cert.

  11. Anon October 19, 2018 1:34 pm

    Andy J,

    You speak to one who would strongly embrace the aim of reversing In re Nuitjen based on the plain factual matters of how this universe operates (and one who would directly state that the term of “manufacture” includes man-altered electromagnetic waveforms), but THIS petition may well do more harm than good, and makes some seriously questionable leaps (for example, the treatment of “tangible” from an evidentiary standpoint is not something that MUST follow from the patent cases – leastwise, I have seen no such indicators by the courts, nor as much as I can tell, from my own understanding of law in relation to evidence.

    There do appear to be some good arguments in the petition, but the petition has its series drawbacks, and does not appear to come out front and center in dealing with a view that the Court may easily be seen to take up in a first instance (the claims – regardless of everything else – appear to be merely math in nature — and not even distinguishable as applied math.

  12. Andy J October 19, 2018 7:41 pm

    Anon 11,

    My take is that data is either tangible or non-tangible, real or not real. You can’t apply different legal definitions to the same thing and have Equal Protection under the Law depending upon the court your case lands in, particularly regarding patents. Equal application of the law in this republic is the foundation of the American legal system. If there is a misapplication due to differing legal definitions, the courts must adjudicate this disagreement. When this disagreement happens at the Federal Circuit Court level, the Supreme Court, becomes the sole and final tribunal with authority to resolve the issue. Hopefully this fully resolves conflicting decisions of lower courts, even if it requires overturning centuries of legal precedent.

    SCOTUS is obligated to adjudicate significant national disputes because our entire political and governmental system is based upon the Rule of Law. Real is real and abstract is not real and intangible. The administration of Justice requires uniformity when defining common terms, We cannot have one court say data is not real regarding patents and then redefine the same term to convict someone of a crime or settle a real estate dispute. A uniform definition of electronic data and uniform treatment in all US courts is essential its future development and use in all areas of commercial life. Electronic data affects where we live, what we do, and even who we are digitally. If our digital identities are not real they can never be protected.

  13. Anon October 19, 2018 10:19 pm

    Andy J,

    You are dealing (or rather, not dealing) with the fact context matters.

    The legal context vis a vis evidence is simply not the same context as it is with patents.

    This has nothing to do with any sense of “uniform rule of law.”

    The two contexts are merely different.

    As I said, there are good arguments concerning reality and what it means to have a real even if “intangible,” or perhaps “transitory” are being confused for “not real.”

    But what I am saying is that the pro se argument falters in more than one place and won’t be entertained because it neither recognizes the different contexts (and makes an unsustained proclamation that is not born out in law), nor does it address the most likely view of the Court as to what the claims are (even if read in light of the specification).

    There are good arguments on different facets, but this is simply not a good vehicle for cert.

  14. Andy J October 20, 2018 5:24 pm

    Anon at 13,

    Agreed, context matters, but so do definitions, especially in interpreting the law. “Abstract” is defined as not tangible, not real. If one appellate court holds that electronic data is abstract and another appellate circuit court holds contrary, there is a controversy at the appellate level. This is the primary basis for the petition for certiorari.

    This is a significant national constitutional legal controversy that affects all facets of law because the CAFC’s holding that electronic data is abstract is contrary to the decisions of other appellate courts, sovereign states, and other countries. The CAFC is a major outlier in this legal controversy.

    This also matters because if the CAFC’s In re Nuitjen holding is reversed, then electronic data embedded in an electromagnetic signal is no longer considered abstract, not tangible and not real. A reversal by the SCOTUS would then require that the lower court rulings be revisited.

    Also of note is that the Respondent in this case dropped its challenge in the appeal to the CAFC that the “process” was math and conceded that the process is a computer process. (They may have recognized that compression and decompression of electronic digital video and audio data is also a specialized computer process and not math). However, the CAFC did not agree with this concession.

    This raises another important contextual issue because of the issue of the validity of the claims. If signals and electronic data were held not to be abstract and passed 101, they would then be reviewed based on 102, 103, or 112 in a Markman hearing, which was not conducted in this case. Because there was neither a 101 hearing nor a hearing at the CAFC, the contextual legal issues of this case were never heard or addressed. This supports the argument that cert should be granted to fully address these important issues.

    Therefore, we both agree, context matters. Can we not also agree that this issue warrants examination by further review of the Court.

  15. Ternary October 20, 2018 7:46 pm

    Andy J., I agree with you. Math performed on a computer is not math, but is in effect switching technology. Math models the switching devices, not the other way around. This is fundamental to computer design. Unfortunately, the Courts (and the USPTO) do not recognize that distinction. One problem is the shortcut that is taken by claim drafters who do not make that distinction either and write the limitations as if the processor performs math. I am not sure that expressly making a distinction between math and the switching circuitry would make a difference. In one of my cases I make that distinction but continue receiving 101 rejections because everything “relates to math” according to the Examiner.

    Furthermore, it seems that to overturn Nuijten as to signals being tangible appears to be a lost cause. The fact that a Judge cannot hold a “signal” in his/her hand appears to be the decisive factor in this. However, the Court in Nuijten also expressly says that a circuit that generates a signal is surely patent eligible. Rather than claiming a signal on an output, it may be possible to claim a device characterized by a physical state. Mechanical calculators clearly are defined by that and so are electronic devices.

    The whole thing is of course technical nonsense,as every technical person knows how a computer works. It is all chicanery to prevent inventors from obtaining a valuable patent on what is considered a “simple invention.” The fact that Burnett had to go to court demonstrates that he had something of value that his opponent wanted to deny him.

    We all know what computers are and that they are different from humans. But many consider computer implemented inventions too simple and want to prevent inventors from obtaining a patent on those inventions. There is really no other reason. The advice to make it all look more technical is not a bad one, but everyone knows that it really does not make a difference to the inventive concept that underlies the invention. I see no reason why a Fast Fourier Transform would make an invention patent eligible, but a transformation of GPS coordinates by a computer does not, nor why novel and non-obvious Decimal Coded Binary to Full Binary machine conversion is abstract.

    I understand Anon’s observations about the legal arguments. However, that does not make it less infuriating how legal arguments collide with scientific facts. Once the initial premise is accepted that a signal and math are both patent ineligible (why?) you have a lost cause.

  16. Andy J October 21, 2018 11:04 am

    Ternary,

    I want to thank you for your support. It is frustrating to see our legal profession refuse to accept scientific facts. It’s naive to think the American people misunderstand the role that scientific forensic evidence plays in the administration of justice. Digital Forensic science has now been elevated to preeminent status in civil and especially criminal law, because it is now part of the popular cultural narrative in movies and television. Yet, these very scientific advances in digital forensic science are being destroyed by intellectual property law.

    As to the scientific facts regarding this case, the Petitioner in his district court opening and surreply briefs painstakingly identifies to the court the scientific factual basis of the change of computer memory “state” through data instantiation during the patented data conversion and concatenation computer process. This ternary computer process is significant and should have clearly placed the claims into allowed statutory patentable subject matter under the post-Alice 101 legal regime. Yet these facts and legal arguments were never accepted by the lower court and were never allowed to be orally argued in court because a 101 hearing was never conducted.

    Yet, these technical issues are not the primary reason certiorari should be granted. The primary issue is the conflict between the CAFC holding and the recognition of signals and electronic data by other appellate circuit courts, individual states, the EU, and finally, the passage by the US Congress of 13 different statues that are used to prosecute cybercrime. Those statues exclusively rely on tangible electronic signals and data as tangible property for use as digital forensic evidence to charge criminals with crimes and prosecute these crimes. These statues are now nullified by the CAFC holdings in Burnett, Digitech, and Nuijten.

    This issue will become glaringly obvious and undeniable when and if the SCOTUS Calls for the View of the Solicitor General (CVSG) regarding this case. Will the DOJ, which is part of the executive branch of our government side with the legislative branch of the government that created these cyberlaws, or side with the Judicial branch, the CAFC, whose interpretations will be at issue.
    Should the Department of Justice side with the CAFC holdings in Burnett, Digitech, and Nuijten, allowing these holdings to remain, they would nullify the 13 statues enacted by the legislative branch of the government to protect the American citizenry from cybercriminals. The resultant retrials of civil and criminal cases based on “abstract” digital evidence would significantly disrupt the entire justice system, not to mention the issue of the rights of states to protect digital data, as several have already challenged the federal net neutrality rules.

    Considering how important location-based identification scientific technology has become in our society, and the fact that this standard essential technology has been recognized in two industry standards, both SMPTE and IETF, cannot be overstated. This technology impacts four major industries: television, motion pictures, telecommunications and computing devices, and as you stated, “demonstrates that he had something of value”. The fact that the Respondent actually signed a licensing memorandum of agreement before Alice and then stalled negotiations after Alice on an issued patent, highlights another problem created by the SCOTUS decision in Alice.

    This petition provides the Supreme Court, and the legislative and executive branches of government with a comprehensive case study of the problems Alice has wrought. It also provides an opportunity to fix this issue or forever decimate civil and criminal forensic scientific evidentiary standards.

    Andy J

  17. Anon October 22, 2018 10:22 am

    Andy J,

    My apologies for not being able to follow you on this topic. Once again, it appears that you are making bald statements and not providing a cogent reasoning to those statements.

    I point out “context,” and you agree, and then turn around and ignore the different context by wanting a definition that ignores the context (your post at 14).

    I “see” the proposition (and the repetition of that proposition) that the two different contexts are in conflict, but when you “define” the conflict as independent of the context, you are – in fact – not taking context into consideration.

    I have a few other difficulties with your approach here.

    You state “CAFC’s holding that electronic data is abstract is contrary to the decisions of other appellate courts, sovereign states, and other countries. The CAFC is a major outlier in this legal controversy.

    But you misconstrue the holding in the very case being advanced. That holding is based on the claim, and that claim is NOT to “electronic data,” nor is “abstract” being defined anywhere**. You (again) advance the claim (but lack the substance) in stating that the context of patent law is contrary to other decisions (in a different context of evidence). Do you have an actual decision on point to what you are claiming? Do you have a case that actually discusses, compares and contrasts these different contexts, and states a holding that bridges the different contexts? If so, I would love to see it, as that case then would back up the assertion.

    Further, you appear to elevate foreign law as somehow being a “controlling point” in some comparison. That’s not how law works.

    ** – you are the one seemingly defining abstract as “not real.” Has a court actually done this in a patent context?

    Again, as I mentioned – you have agreement with the non-reality of the In re Nuitjen case, so maybe we can build from there. I am not sure that THAT case deal with any type of “not real” though.

    This comment of yours is something I am not following: “Also of note is that the Respondent in this case dropped its challenge in the appeal to the CAFC that the “process” was math and conceded that the process is a computer process. (They may have recognized that compression and decompression of electronic digital video and audio data is also a specialized computer process and not math). However, the CAFC did not agree with this concession

    Did respondent withdraw its argument? I didn’t see that. What do you mean that the CAFC did not agree with concession? That seems to be a point that you want to argue differently than what the court has stated (without addressing what the court has stated, or why what the court has stated should not [or cannot] BE as the court has stated. This too is one of the weaknesses I pointed out in the cert petition, because the petitioner has not addressed the “easy” position that not only the CAFC has taken, but that the Supreme Court is likely to take. As I noted, the claim at issue (and any other thrust in the petition will melt away if the claim cannot carry), does not even appear to overcome the “plain math” of a cabined Benson holding (e.g., the claim is not even to applied math).

    You also keep on saying that there was no “101 hearing.” What do you mean by that? Do you mean that the legal issue of 101 was not heard or addressed by the parties and by the court? How would that be true, given that the court has made its decision on that basis? I do not see that as supporting cert, and in fact, this – as is – supports NOT granting cert because this assertion lacks clarity.

    As to “Therefore, we both agree, context matters. Can we not also agree that this issue warrants examination by further review of the Court.

    I would love to agree. I am not there. Maybe if the “issue” were better laid out, taking into account instead of ignoring context, I might be persuaded.

    And by better laid out, I do mean that THIS case needs to be the driver for reaching any ancillary issues (issues as noted, I DO agree with). But just because I agree with other issues, and agree with arguments on those other issues, does NOT mean that this case is the vehicle for putting those other issues to the Supreme Court. This too is not how the law works.

    Moving on to your post in reply to Ternary at 16, can you show me any single case that supports the proposition of “ Yet, these very scientific advances in digital forensic science are being destroyed by intellectual property law.“…? Do you have a case in the context of evidence wherein the judges have denied evidentiary value based on the context of “abstract” in a patent law case? Is this real, or is this merely the argument that you are making?

    As to “This ternary computer process is significant and should have clearly placed the claims into allowed statutory patentable subject matter under the post-Alice 101 legal regime.” – I fear that you do not understand just what the “post-Alice 101 legal regime” means. A large portion of the clamor in the legal community is BECAUSE the “post-Alice 101 legal regime” would NOT allow “real” physical electronic data changes to be considered patent-eligible*** subject matter. You seem unaware that the scoreboard IS broken and that a real issue IS that the scoreboard is broken.

    *** a quick aside, please note that there is a very real difference between patent-eligible and patentable – please do not use the terms as if they were interchangeable, as they are not.

    Additionally, you make another :101 hearing” type of comment with: “were never allowed to be orally argued in court because a 101 hearing was never conducted” – not allowed to be orally argued…? Where are you getting this? Was there an attempt and a rebuke from the court during oral arguments? Was there a “right” to an oral argument that was impermissibly denied? These claims of yours come across as weakening your overall position.

    Also weakening (and clearly, you feel this is strengthening): “Yet, these technical issues are not the primary reason certiorari should be granted. The primary issue is the conflict between the CAFC holding and the recognition of signals and electronic data by other appellate circuit courts, individual states, the EU, and finally, the passage by the US Congress of 13 different statues that are used to prosecute cybercrime

    This weakens because you blow right by any contextual differences and make an unsupported assertion of something that would be better proven (or at least supported). I “get” that THAT is the take-away that you are aiming for. But merely repeating the take-away as if it has happened (or must happen) while not providing any cases that even begin to indicate that courts are taking the one matter (in one context) and applying it as you fear (in a different context) is not persuasive. I simply have not seen ANY court act as you are claiming that the courts must act.

    Your claim of “These statues are now nullified by the CAFC holdings in Burnett, Digitech, and Nuijten.” has no merit precisely because the statutes have not been nullified, and ARE being followed, regardless of what is going on in the patent context. If you HAVE a case clearly showing your proposition, you should share that case.

    There will be NO “this will become glaringly obvious” because what is glaringly obvious is that the fact of different contexts will be used to show that your “must” not only has not happened, but that there is no “danger” (imminent or otherwise) of your “must” happening.

    Importance of the technology in society, recognition of any type of standard essential aspects (in any number of different industries) have not been tied (properly) to the patent context. They may be there, but so what? How is there presence actually tied to the patent context?

    This petition does NOT provide anywhere near a comprehensive case study of the problems, as it not only does not show how to bridge the different contexts, it lacks an appreciation that different contexts exist. Yes, this IS “an opportunity,” but THIS petition squanders that opportunity precisely BECAUSE it makes a bald statement without providing that “comprehensive case study” on point to bridge the different contexts.

    I see a “bad facts makes bad law” case here with THIS petition, and as much as I am pro-patent, THIS case is not a worthy one to serve what you (and in truth, both of us) want.

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