

Federal Circuit case renders many broadly written software patents invalid - grellas
http://www.patentlyo.com/patent/2011/08/if-the-software-method-is-not-patentable-then-neither-is-the-computer-readable-medium.html

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dctoedt
The court's opinion in this case (the _CyberSource_ case) is at
[http://www.cafc.uscourts.gov/images/stories/opinions-
orders/...](http://www.cafc.uscourts.gov/images/stories/opinions-
orders/09-1358.pdf).

Tl;dr: The three-judge appeals court panel affirmed a summary judgment of
invalidity. The panel announced a pretty straightforward test as one "filter"
that can rule out patentability for certain claims:

1\. If a method can be performed by the human mind alone, or with paper and
pencil, then it's an "abstract idea," and therefore unpatentable under Supreme
Court precedent.

2\. If as a practical matter [a] the method _cannot_ be performed with paper
and pencil [b], then it passes the filter described in 1 above [c].

3\. If a method would be unpatentable under 1 above, then a claim to a storage
device encoding computer instructions for performing the method is likewise
unpatentable.

NOTES:

[a] In its discussion, the court distinguished a couple of prior cases where
such _non_ -paper-and-pencil methods had been held patentable. See pages 20-21
of the PDF. EDIT to respond to petegrif's comment below: One of the earlier
methods that had been ruled patentable was "for rendering a halftone image of
a digital image by comparing, pixel by pixel, the digital image against a blue
noise mask ...." The _CyberSource_ panel distinguished this precedent by
saying that, _as a practical matter,_ that earlier method could _not_ be
performed by the human mind or with paper and pencil; see page 21 of the PDF.

[b] An unanswered question: How exactly are ordinary people supposed to
determine whether a method can or can't be performed with paper and pencil "as
a practical matter"?

[c] Even if a method gets past the "paper and pencil" filter, there are still
other filters to pass before it will be patentable---but once the Patent and
Trademark Office has issued the patent, then a presumption of patentability
applies.

COMMENT: This is an area where the net effect of the precedents is not
entirely clear. It wouldn't surprise me if the court were to take this case
_en banc,_ namely to have all of the court's 12 judges rehear and redecide the
case in an attempt to clarify the law. (An _en banc_ opinion is generally
regarded as carrying more precedential weight than an opinion by a three-judge
panel.)

~~~
petegrif
The problem I have with this is the following. a) There is no software that we
cannot put into hardware - literally! Software and hardware are
interchangeable. So the oft cited distinction between s/w and h/w is, to say
the least, somewhat arbitrary. b) "If a method can be performed by the human
mind alone, or with paper and pencil..." This test sounds as if it might make
sense but runs into real problems once you bear in mind issues of
computability. E.g. is it therefore patentable if although it could in
principle be performed by the human mind with a paper and pencil the degree of
computation required is so enormous that such a method is completely
impractical. e.g. real time graphics processing. I suspect that the class of
such methods is extremely large.

~~~
lmkg
I don't see the problem with A. If you take the software, which can't be
patented, and put it into hardware, you can patent the hardware. This seems
perfectly reasonable to me, and it holds pretty closely to the original idea
of patents: A specialized device that performs an action is an invention, but
the act being performed is not an invention. I also don't think that software
that emulates the hardware is not in violation of the hardware patent.

I think B is a much bigger problem. Any computer program could be performed
with pencil and paper, by getting a big file folder to simulate RAM, indexing
it by numbers, and performing assembly instructions by hand with post-it notes
as registers. I think the major exceptions are interfacing with other
components, including UI systems and networking, and anything with a real-time
component.

~~~
pcc
> Any computer program could be performed with pencil and paper, by getting a
> big file folder to simulate RAM, indexing it by numbers, and performing
> assembly instructions by hand with post-it notes as registers

Indeed. But surely if the purpose of the algorithm is something like "find
whether this combination exists in a set of millions / billions of records
within a tractable time" then it cannot possibly be done by hand in a
tractable/practical way -- and it will fail this test?

~~~
jimktrains2
It's still just an algo. It's still just math.

~~~
TheCapn
Yes but when time-sensative information relies on speedy calculations or
approach then there is inherent usefulness to the invention. A competing firm
may choose to solve the issue by paper in order to avoid lawsuits for stealing
the patentable invention but its impractical.

~~~
marshray
So an otherwise fundamentally unpatentable algorithm could become patentable
"when used in a time-sensitive application"?

~~~
nitrogen
Or, an otherwise fundamentally unpatentable algorithm with today's core counts
could become patentable five to ten years from now when pocket computing power
is measured teraflops?

------
dminor
> Following precedent set by Benson and Abele, the court here held that an
> unpatentable mental process remains unpatentable even when restricted to use
> on a computer.

Really, really hoping this logic survives and becomes widely applied.

~~~
tghw
I can imagine certain individuals making a lot of money as expert witnesses,
demonstrating the execution of patented software processes completely
mentally.

~~~
marshray
Wouldn't you think that "mentally" includes the use of pencil and paper? Given
enough of that and time I can simulate any classical computer.

~~~
wisty
In a sense, yes. But it might simply be that you can't patent anything that a
normal person (say, the judge) could easily do with a pencil and paper.

So things like "See if the guest's name is on the guestlist" might be found
unpatentable, but complicated sequences of instructions (which you have
specifically laid out) for which you really _do_ need a computer (or some
other machine) might still be patentable.

I'm not a lawyer, though.

~~~
jimktrains2
If you're performing a computation that cannot be done with pencil and paper,
a computer cannot do that computing.

~~~
wisty
As another post is pointing out, there is a "practicality" clause. If you can
use a computer to do something that would otherwise take days to compute, it
may still be patentable.

~~~
marshray
It's impractical to multiply two million-digit numbers by hand, but elementary
schoolkids know the algorithm to do it. Does that imply that using a computer
to multiply numbers of sufficient size would be patentable?

How about a particularly efficient multiplication algorithm that can be
demonstrated by hand?

How about a linear problem optimization algorithm?
[http://en.wikipedia.org/wiki/Karmarkar%27s_algorithm#Patent_...](http://en.wikipedia.org/wiki/Karmarkar%27s_algorithm#Patent_controversy)

How about a network optimization problem?
<http://www.google.com/search?q=network+optimization+patent>

The whole idea of patents in a post-industrial economy is a farce.

------
btcoal
"CyberSource's patented invention is simple: when validating online credit
card purchases, use IP address information (such as IP addresses) as a check
against fraud. Thus, the patented method might raise a red flag if someone
attempts to make a large internet purchase through an IP address that had
previously been used for a fraudulent transaction."

IANAL and this is not legal advice, but the guys (probably) that tried to
patent this should go f __* themselves.

~~~
nitrogen
Rather than do a drive-by downvote, I'm going to say that while I may share
your sentiment to an extent, it has been my experience that HN usually prefers
more substantive comments.

------
philipkimmey
Patents are totally beyond me.

Supposedly there's a concept of "non-obviousness" but every patent that is
disputed is strikingly obvious to a "person of ordinary skill in the art."

On a panel of 5 competent engineers, asked "How might we go about identifying
potential credit card fraud on the Internet?" I suspect all 5 would
independently bring up the idea of storing customer IPs and comparing that to
IPs that have used that credit card in the past.

I can't help but feel like patent law is just a way for lawyers to extract
money from people actually trying to make things.

------
monochromatic
Title is slightly misleading. From the article, it sounds like they're just
applying the usual standards for software patents to Beauregard claims. If
this is the first time that's happened, that's pretty interesting... but it
seems to me to be clearly the right result, and I didn't realize there was any
serious debate about that question.

------
6ren
> Here, the court repeated its stance that mere data gathering steps such as
> "obtaining information" cannot be sufficient to "make an otherwise
> nonstatutory claim statutory."

It's just poor drafting. If they'd said "do all this stuff to determine if the
credit card is valid" and added " _if is valid, then execute the internet
transaction, otherwise deny it_ " as part of the claim, then it would not
merely be providing information - and could not be done with paper and pencil
alone. You need to make a change in the world, i.e. execute the transaction.
Usually, a patent would have later "dependent" claims, that further restricted
an initial overly broad claim, but apparently they didn't here.

I get the impression that the court is being a bit pedantic, as it's clear
what was meant; however, it is true that pure information can be used in many
ways, not necessarily restricted to execute/deny.

------
JVerstry
"(...) the court focused on prior case law holding that mental processes
standing alone are not patentable." I hope judges will support those
statements more and more. Really good news.

------
mckoss
Judges have NO IDEA how to interpret patents. I would claim that EVERY MACHINE
is reducable to a (software) simulation, and that every software simulation
can be (in theory) executed by the human mind with paper and pencil. While you
could argue that the claims in this case are obvious, I find the reasoning
used here to be contrary to ANY patent being issued for any machine or
process.

~~~
buff-a
Simulating a steam engine in your head doesn't actually pump water out of coal
mines. However, "simulating" checking an IP address against a list produces
_exactly_ the same thing as the claimed invention: _information_. If your
patent produces _information_ then you're pretty much fucked. And rightly so.

~~~
6ren
If checking the IP leads to a result, such as blocking the user, it could not
be simulated with paper and pencil. e.g. Amazon's infamous one-click purchase
patent could not be simulated with paper and pencil.

One nice quality of this test is it makes the patent less abstract, more
concrete, and therefore less broadly applicable: one of the arguments for
mathematical algorithms not be patentable is that they are too general, and a
monopoly on them would block too much.

~~~
buff-a
(IANAL. This is my opinion. Welcome to correct me.)

 _If checking the IP leads to a result, such as blocking the user_

"blocking the user". What does that mean? It means not giving the user what
they asked for. It is absolutely doable with pen and paper, because the "user"
is being "blocked" from "information".

But even if that were not the case: suppose it where a physical door being
locked or unlocked. Well done, you've just attempted to patent a fucking
bouncer.

Basically you can patent inventive things. But if your patent can't stand on
its own if the computer part is replaced with a human operator, then it wont
stand.

Amazon's oneclick travesty is totally doable on pen and paper and I hope
someone will have another go at it.

~~~
6ren
It has to also be inventive.

The above is just an extra hurdle to disqualify claims that only produce
information.

BTW: you can't block a user with pen and paper. You can obtain information for
your decision to block them, but pen and paper, in isolation, have no impact
on the world. Even something like a signed contract, PO etc has no effect,
unless it is used in part of a system. If this doesn't make sense to you,
recall that we're talking about the claims in the patent: of course, you can
use pen and paper to do many things, but in a patent, it's not enough to claim
you can work out the information with pen and paper; you have to also _claim_
what you will do with that information.

------
daimyoyo
Good. Overreaching software patents and the patent trolls who file them are a
cancer on the software industry.

------
sehugg
The text is in Esperanto, the comments are a Befunge program. Anyone willing
to post an executive summary?

~~~
dctoedt
EDIT: I just (re)posted a summary as a top-level comment.

