Table of Contents:


Introduction to the online version

Foreword

Preface to the printed version

Copyright Overview

Software Copyright

Digital Copyright

Patent Overview


Software Patents

- History

- Benson

- Flook

- Chakrabary and Diehr

- Drawing the Line

- Business Methods

- Other Ways of Claiming

- Printed Matter

- Applying for a Software Patent


Full treatise table of contents

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Chapter 5: Software-Based Inventions

V. Printed Matter and Computer Software

In re Lowry {FN64: 32 F.3d 1579, 32 USPQ2d 1031 (1994)} is about how a software invention whose novelty is in the way that it stores data can be claimed. The invention in Lowry was a “Data Processing System Having a Data Structure with a Single, Simple Primitive.” As noted in the decision, “The invention provides an efficient, flexible method of organizing stored data in a computer memory.” Claim 1 is representative.

A memory for storing data for access by an application program being executed on a data processing system, comprising:

   a data structure stored in said memory, said data structure including information resident in a database used by said application program and including:

   a plurality of attribute data objects stored in said memory, each of said attribute data objects containing different information from said database;

   a single holder attribute data object for each of said attribute data objects, each of said holder attribute data objects being one of said plurality of attribute data objects, a being-held relationship existing between each attribute data object and its holder attribute data object, and each of said attribute data objects having a being-held relationship with only a single other attribute data object, thereby establishing a hierarchy of said plurality of attribute data objects;

   a referent attribute data object for at least one of said attribute data objects, said referent attribute data object being nonhierarchically related to a holder attribute data object for the same at least one of said attribute data objects and also being one of said plurality of attribute data objects, attribute data objects for which there exist only holder attribute data objects being called element data objects, and attribute data objects for which there also exist referent attribute data objects being called relation data objects; and

   an apex data object stored in said memory and having no being-held relationship with any of said attribute data objects, however, at least one of said attribute data objects having a being-held relationship with said apex data object.

The examiner rejected this claim as nonstatutory under Section 101 and obvious under Section 103 in light of a prior art patent showing a different data structure stored in a computer memory. The Board reversed the examiner’s rejection under Section 101 but affirmed the rejection under Section 103 under the printed matter doctrine of not giving weight to the printed matter when considering whether an invention is novel and nonobvious. As expressed in In re Gulack:

   Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. {FN65: 703 F.2d 1381, 1385, 217 USPQ 401, 404 (1983)}

The Board held that Lowry had not shown that there was a functional relationship between the data structures and the memory containing them, and gave no weight to the nature of the data structures in the claims. Since the prior art patent disclosed a computer with memory containing data structures (although of a different form), disregarding the nature of Lowry’s data structures makes his invention obvious in light of that patent.

Lowry appealed to the Federal Circuit. In its decision, the court first noted that “Gulack cautioned against a liberal use of ‘printed matter rejections’ under section 103” because it “stands on questionable legal and logical footing” and felt that it should not be extended to a new field, such as information stored in a computer memory.

   This case, moreover, is distinguishable from the printed matter cases. The printed matter cases “dealt with claims defining as the invention certain novel arrangements of printed lines or characters, useful and intelligible only to the human mind.” The printed matter cases have no factual relevance where “the invention as defined by the claims requires that the information be processed not by the mind but by a machine, the computer.” Lowry’s data structures, which according to Lowry greatly facilitate data management by data processing systems, are processed by a machine. Indeed, they are not accessible other than through sophisticated software systems. The printed matter cases have no factual relevance here. . . .

   More than mere abstraction, the data structures are specific electrical or magnetic structural elements in a memory. According to Lowry, the data structures provide tangible benefits: data stored in accordance with the claimed data structures are more easily accessed, stored, and erased. Lowry further notes that, unlike prior art data structures, Lowry’s data structures simultaneously represent complex data accurately and enable powerful nested operations. In short, Lowry’s data structures are physical entities that provide increased efficiency in computer operation. They are not analogous to printed matter. The Board is not at liberty to ignore such limitations. {FN66: 32 F.3d at 1583-1584, 32 USPQ2d at 1034-1035 (citations omitted)}

Since the elements of the claims limited to particular data structures could not be ignored, the claims were not obvious in light of prior art cited by the examiner, and the decision on the Board affirming the examiner was reversed.

But one should be careful about abolishing the printed matter doctrine too quickly, even when information is recorded in a way that can be perceived only by a machine. As Chief Judge Archer warned in his dissent in Alappat:

   Consider for example the discovery or creation of music, a new song. Music of course is not patentable subject matter; a composer cannot obtain exclusive patent rights for the original creation of a musical composition. But now suppose the new melody is recorded on a compact disc. In such case, the particular musical composition will define an arrangement of minute pits in the surface of the compact disc material, and therefore will define its specific structure. Alternatively suppose the music is recorded on the rolls of a player piano or a music box.

   Through the expedient of putting his music on known structure, can a composer now claim as his invention the structure of a compact disc or player piano roll containing the melody he discovered and obtain a patent therefor? The answer must be no. The composer admittedly has invented or discovered nothing but music. The discovery of music does not become patentable subject matter simply because there is an arbitrary claim to some structure.

   And if a claim to a compact disc or piano roll containing a newly discovered song were regarded as a “manufacture” and within Section 101 simply because of the specific physical structure of the compact disc, the “practical effect” would be the granting of a patent for a discovery in music. Where the music is new, the precise structure of the disc or roll would be novel under Section 102. Because the patent law cannot examine music for “nonobviousness,” the Patent and Trademark Office could not make a showing of obviousness under Section 103. The result would well be the award of a patent for the discovery of music. {FN67: 33 F.3d 1526, 1553, 31 USPQ2d 1545, 1565 (1994) (Archer, C.J., dissenting) (citations omitted)}

V.A. Beauregard’s Floppy Disks

In re Beauregard was an appeal by IBM of a decision of the Board of Patent Appeals that a floppy disk or other computer storage medium containing a novel and nonobvious computer program is not proper subject matter for a patent. (Because the Patent Office agreed to Beauregard’s arguments, there is no decision by the Federal Circuit, simply an order vacating the case and remanding it to the Patent Office.) Beauregard and his co-inventors, employees of IBM, had already received a patent (4,962,468) on a technique for filling the interior of a polygon displayed on a computer graphics device. As is common for software-based inventions, the patent claimed both methods for performing the filling technique and a system for performing the technique. The system could be either a general-purpose digital computer programmed to perform the method (the preferred embodiment) or a special-purpose graphics processor.

IBM was concerned that the primary people who would directly infringe these claims would be the end-users of graphics software, because it is only when the method is actually performed or when it configures a general-purpose computer that direct infringement occurs. Competitors would directly infringe the patent only when they ran the patented method, not when they made and sold floppy disks containing programs using the patented method. A competitor could be sued as a contributory infringer, but that generally means also suing a direct infringer (often a current or potential customer) and requires that the competitor using the patented method have actual knowledge of the patent. And if there is a substantial noninfringing use for the programs being sold, there may not be contributory infringement.

Since most software is distributed on a storage medium such as a floppy disk or CD-ROM, IBM figured that if it could get a patent on the storage medium containing the novel and nonobvious technique, it could sue the competitor as a direct infringer for making or selling the patented invention. In a continuing application, it claimed the invention as what it called a “computer program product” – a computer-readable medium having a program implementing the technique of the invention. In proceedings in the Patent Office, IBM argued that a computer program product was an article of manufacture or a component of a machine, both patentable subject matter.

The patent examiner and the Board of Patent Appeals rejected the claims as not being proper subject matter for a patent. They relied on a series of court decisions regarding “printed matter” which said that if the information stored on a medium was not related to that medium, the invention was not statutory or, alternatively, the novelty of the information could be disregarded when considering the novelty of a claim. Since there was nothing special about how the program was written on the floppy disk or other media, the Patent Office found the claims nonstatutory and obvious in light of other programs written on floppy disks.

IBM appealed the Patent Office’s decision to the Federal Circuit. This was not surprising, since IBM had developed this case as a vehicle for the Federal Circuit to state whether computer program products were patentable subject matter. IBM was supported in its appeal by ten amicus briefs from industry and bar associations, stressing the importance of protecting computer software.

After seeing that there was virtually no popular support for its position, the Patent Office reversed its stand and declared that a computer program product was proper subject matter for a patent, that the printed matter doctrine did not apply to computer-readable programs, and that it was preparing appropriate guidelines on software patents for its examiners. The Federal Circuit found that there was no longer a dispute between the parties, and it remanded the application to the Patent Office for further prosecution in light of the Patent Office’s new position.

V.B. Patent Office Guidelines: Stored Information

Under the guidelines, the Patent Office will accept Beauregard-type claims to a computer program product. The proposed guidelines stated that “a computer-readable memory that can be used to direct a computer to function in a particular manner when used by the computer is a statutory ‘article of manufacture’.” {FN68: 60 Fed. Reg. 28778, 28778 (1995)} In fact, any memory device is an article of manufacture, whether its contents can direct the functioning of a computer or not.

Although the proposed guidelines included floppy disks and compact discs in the examples of a computer-readable medium that are statutory subject matter, disks storing a program, in contrast to a computer’s RAM, do not seem to fit the guideline’s own test. The bits stored in the program repository do not cause a computer to operate in a particular manner any more than any other data bits do. The program data on a disk must be first read and processed by a loader program to be placed in executable memory. It is only programs in RAM or ROM that cause a computer to perform the desired functions.

Furthermore, there is no difference in a floppy disk or compact disc itself if its stored information is a computer program that can be loaded into execution memory or data that can be converted to audio. Yet, according to the guidelines, one is a statutory article of manufacture and the other isn’t. The decision is based on the intended use of the data, not the nature of the possible article of manufacture. The same floppy disk, containing both a program and data operated on by a computer (such as text or digitally-encoded music or pictures) would be both an article of manufacture and not an article of manufacture, depending of what data on the floppy disk you consider.

It is important that law be anchored in reality, and distinctions be drawn only where they actually exist. The “mathematical algorithm” distinction did not work well because there was no similar distinction in computer science. In contrast, the “a general-purpose computer when programmed becomes a new machine” concept works well because the idea matches almost exactly the concept of virtual machines as discussed in operating systems.

The proposed guidelines made a distinction not well-anchored in computer science. They try say that a storage medium, or the bits it holds, is somehow different because of the intended use of a bit. By adding a qualification about its ultimate use, the guidelines depart from the intuitive concept that an article of manufacture is any tangible object made by man.

In response to public comments, the final guidelines took a different approach to drawing a line between patentable CD-ROMs holding computer programs and regular CDs holding music. It first noted that the statute requires an invention to be “useful”:

   The subject matter sought to be patented must be a “useful” process, machine, manufacture or composition of matter, i.e., it must have a practical application. The purpose of this requirement is to limit patent protection to inventions that possess a certain level of “real world” value, as opposed to subject matter that represents nothing more than an idea or concept, or is simply a starting point for future investigation or research. Accordingly, a complete disclosure should contain some indication of the practical application for the claimed invention, i.e., why the applicant believes the claimed invention is useful.

   The utility of an invention must be within the “technological” arts. A computer-related invention is within the technological arts. A practical application of a computer-related invention is statutory subject matter. This requirement can be discerned from the variously phrased prohibitions against the patenting of abstract ideas, laws of nature or natural phenomena. An invention that has a practical application in the technological arts satisfies the utility requirement. {FN69: 61 Fed. Reg. 7478, 7479 (1996)}

The final guidelines then drew a distinction between function and nonfunctional descriptive material:

   Descriptive material can be characterized as either “functional descriptive material” or “non-functional descriptive material.” In this context, “functional descriptive material” consists of data structures and computer programs which impart functionality when encoded on a computer-readable medium. “Non-functional descriptive material” includes but is not limited to music, literary works and a compilation or mere arrangement of data.

   Both types of “descriptive material” are non-statutory when claimed as descriptive material per se. When functional descriptive material is recorded on some computer-readable medium it becomes structurally and functionally interrelated to the medium and will be statutory in most cases. When non-functional descriptive material is recorded on some computer-readable medium, it is not structurally and functionally interrelated to the medium but is merely carried by the medium. Merely claiming non-functional descriptive material stored in a computer-readable medium does not make it statutory. Such a result would exalt form over substance. Thus, non-statutory music does not become statutory by merely recording it on a compact disk. {FN70: 61 Fed. Reg. at 7481}

It is likely that the validity of computer program product claims will not be tested in court until a software distributor is sued for infringement. The Patent Office now appears to allow any novel software-based invention that has any practical use, and will treat any media storing such an invention as a patentable article of manufacture.

V.C. The Effect on Copyright

Although consideration should be given to the effect on copyright of patents for articles of manufacture that are programs stored in repository memories, such consideration was clearly outside the permissible scope of the PTO guidelines. Because programs are works of authorship stored in a tangible medium of expression, they are already protected by copyright. Further, copyright law not only provides protection to the author but also provides rights to users.

It is an infringement of a patent to make the patented invention. Whenever the program is copied, a new instance of the program stored in a memory is made. If a memory storing a particular program is patented, any copying results in a new instance of the program stored in memory that infringes the patent. For most inventions, a replicator capable of taking one instance of a machine or manufacture and directly producing a new instance would be something out of science fiction. For a program stored in memory, the copy command on the computer system is such a replicator.

For example, if the program was originally stored on a floppy disk, as would be the case when it is received from the software developer, another instance of the patented stored program is made when the program is copied from the floppy disk onto a hard disk. Another instance is made whenever an archive copy of the hard disk is made. Finally, each time the program is run it must be copied from the hard disk into the RAM of the computer, making yet another instance of the patented program stored in memory.

The patent laws do not contain an equivalent to Section 117 of the Copyright Act, {FN71: 17 U.S.C. §117} which permits copying of a computer program if it is a necessary step in its use. Anyone copying a program that includes a method that is the subject of a “program stored in memory” patent would infringe that patent, no matter how minor the method is to the entire computer program. This would be similar to the situation where an automobile containing a patented screw infringes the patent on that screw, even if the screw is an inconsequential part of the automobile.

In addition, patent law does not provide an equitable balance between the legitimate rights of the patent owner and the rights of users such as provided by “fair use” under Section 107 of the Copyright Act. {FN72: 17 U.S.C. §107}

It might be argued that the patent exhaustion doctrine, which allows the rightful owner of a patented device to use or sell that device, permits the making of new instances of patented stored programs if such copies are necessary for the use of the software. Nevertheless, the patent exhaustion doctrine has never allowed the owner of one instance of a patented article of manufacture to make another instance without the permission of the patent owner. On the contrary, there are many cases that try to resolve whether an apparatus is being repaired (not making the invention) or rebuilt (making the invention and infringing the patent). It is uncertain whether a court would extend the patent exclusion doctrine to include the making of new instances of stored programs.

Patents on computer programs residing in memory devices could preempt many of the user rights provided under the Copyright Act, particularly Section 117. By their nature, such patents will be infringed as part of the normal and expected usage of the programs. As a result, such patents distort both the patent and copyright systems simply to provide an avenue for suing the producer, instead of the end user, of a program that infringes a patented method.

V.D. Beyond Beauregard

Unfortunately for the people who promoted Beauregard as a way of reaching the producer of infringing software without having to go through an end user, more and more software is being distributed not by floppy disk or CD-ROM but over the Internet. And that means there is no “article of manufacture” that stores the program being distributed, and no clever way to claim the invention to reach the real infringer. While there is an article of manufacture produced on the end user’s machine from the download, the whole purpose of Beauregard was to avoid having to look to the end user for any infringement.

In training materials for the Guidelines, the Patent Office suggested a possible claim to a propagated signal carrying a program. In its example, the program both compressed and encrypted data. This claim was:

A computer data signal embodied in a carrier wave comprising:

   a. a compression source code segment comprising [the code]; and

   b. an encryption source code segment comprising [the code]. {FN73: “Examination Guidelines For Computer-Related Inventions,” United States Patent and Trademark Office, 37, Claim 13 (1996)}

But is a data signal a “process, machine, manufacture, or composition of matter,” as required by Section 101. {FN74: 35 U.S.C. §101} In early 2008, the Federal Circuit answered this question, holding that a claim to a signal did not fall into any of the four statutory categories: process, machine, composition of matter, or manufacture. The majority felt that an article of manufacture had to be something tangible.{FN74a: In re Nuijten, 515 F.3d 1361, 85 USPQ2d 1927 (Fed. Cir. 2008)}

One justification for a Beauregard-type patent on a memory device, like a floppy disk, that storees a novel and nonobvious computer program is that the conventional ways of claiming a software-based invention did not provide proper protection against the true infringer. If the invention is claimed as a method, the claim is infringed only when the method is actually used. If the invention is claimed as a machine running the program, the claim is infringed only when the program is actually loaded into the computer. In both cases, it is the end user of the program who is the actual infringer, and who may not be aware that use of the software infringes a patent.

But the true infringer of the patent on the software-based invention is the competitor who included the patented method in its software and sold it to the end user. The competitor could be accused of inducing or contributing to the infringement of the patent. However, such an accusation presents a number of problems. For example, to be a contributory infringer, the competitor must know that what it is producing will lead to an infringement; they must have actual knowledge of the patent.

Beauregard-type claims attempt to get around these problems by claiming any memory device containing the patented software method. But as discussed above, such claims cause problems because end users infringe the patent whenever they copy or use the program, and because such claims base the patentability of a memory device on the intended use of its contents.

It is a red herring to say that it is more difficult to prove inducement of infringement or contributory infringement because some end user must be dragged into the case to show a direct infringement. First, it is highly unlikely that somebody is selling software infringing a patented method without testing it and thereby using the patented method, so such a software marketer is likely to be a direct infringer.

But more important, direct evidence of infringement by an end user is not required to prove inducement of infringement. Circumstantial evidence of infringement, such as evidence of extensive sales, is sufficient. {FN75: Moleculon Research v. CBS, 793 F.2d 1261, 1272, 229 USPQ 805, 813 (Fed. Cir. 1986)}

It would be better to concentrate on getting court interpretations of Section 271 {FN76: 35 U.S.C. §271} clearly holding that the distribution of a computer program whose use infringes a machine or process patent is inducing infringement or is contributory infringement, or congressional amendment of Section 271 to state it explicitly, rather than trying to make data signals an article of manufacture or to make floppy disks magically either an article of manufacture or not, depending on the intended use of the information on that floppy disk.


Next section: Applying for a Software Patent


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