40 Years Ago The Supreme Court Effectively Banned Software Patents; Remember That?

from the time-to-bring-it-back dept

Over at Forbes, Tim Lee has reminded us that it's the 40th anniversary of the case in which the Supreme Court really banned software patents, arguing that they were really just math, and you can't patent math. That case, Gottschalk v. Benson, had been seen to suggest that software programs, by themselves, could not be covered by patents. As the ruling noted:
It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.
As Lee notes, the above effectively applies to any software patent that can be reduced to an algorithm:
Of course, a similar argument could be made about any software patent. A computer program is nothing more than a sequence of mathematical operations—a complex mathematical formula. Therefore, any patent that claims a method of solving a problem by programming a general-purpose computer is, like the patent the high court struck down 40 years ago, effectively a patent on a mathematical algorithm.
So why do we have so many software patents today? Well, as Lee notes, it's basically because the appeals court, CAFC, that was set up to handle all patent appeals (among other things) effectively overruled the Supreme Court on this issue (to be fair: the Supreme Court's ruling was not 100% clear):
Beginning in 1989, the Federal Circuit began handing down a series of decisions that made it easier to get software patents. By the end of the 1990s, all practical limits to patents on software had been dismantled, sparking the software patent arms race that continues to this day.

Yet theoretically, the Supreme Court’s 1972 ruling is still a binding precedent. The Supreme Court re-iterated its rule against patenting software in 1978. The Supreme Court did uphold a patent on a software-controlled rubber-curing machine in 1981, but its ruling emphasized that this was because the patent covered a physical machine that happened to have a software component, rather than claiming a software technique by itself.
I have argued that it's a mistake to specifically try to "carve out" software patents through some sort of regulatory measure, but I have no problem with the court finally recognizing that algorithms alone are math and shouldn't be patentable. I still think that won't fully solve the problems of the patent system (and that we'd be well-served by some other fixes), but it would be a good place to start. Unfortunately, the Supreme Court has avoided addressing the question:
Unfortunately, the Supreme Court hasn't made any effort to rein in the Federal Circuit on the software patent issue. While the Supreme Court saved us from patents on medical diagnostic techniques this year, it hasn't examined the validity of a software patent since 1981. It's past time for the Supreme Court to insist that lower courts respect its precedents, which, after all, are still the law of the land.
What Lee leaves out is that it's not just that the Supreme Court hasn't taken any such cases, but that when it has taken cases where it could comment on this, it has actively avoided the subject, and basically done everything to avoid having to make a direct ruling on this issue. That's unfortunate.


Reader Comments (rss)

(Flattened / Threaded)

  •  
    identicon
    Anonymous Coward, Nov 21st, 2012 @ 2:46pm

    Actually, it did not ban "software" patents, but Mr. Lee is certainly entitled to believe it did.

     

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      Mike Masnick (profile), Nov 21st, 2012 @ 4:26pm

      Re:

      Actually, it did not ban "software" patents, but Mr. Lee is certainly entitled to believe it did.


      We pretty clearly explain in the post what is meant by this. You, on the other hand, explain nothing and just say "he's wrong!"

      Which one is more convincing?

      Hint: it's not you.

       

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  •  
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    Anonymous Coward, Nov 21st, 2012 @ 5:07pm

    Since neither Mr. Lee nor you appear inclined to accept any opinion other than your own, it certainly seems to me that a declarative comment to the contrary is more than adequate as it will simply fall on deaf ears anyway.

     

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      Mike Masnick (profile), Nov 21st, 2012 @ 5:13pm

      Re:

      Since neither Mr. Lee nor you appear inclined to accept any opinion other than your own, it certainly seems to me that a declarative comment to the contrary is more than adequate as it will simply fall on deaf ears anyway.

      Translation: This AC has no actual argument, can't back up what he's saying for shit, and just got embarassed when he was called on it.

      Par for the course.

      Happy to listen to opposing opinions all the time. You are not giving one. You're just full of shit.

       

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      techflaws (profile), Nov 24th, 2012 @ 2:45am

      Re:

      Which makes perfect sense to post then.

       

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  •  
    identicon
    Anonymous Coward, Nov 21st, 2012 @ 5:41pm

    Your excremental obsession with those holding views contrary to yours is unsurprising, but perplexing nevertheless.

     

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      Mike Masnick (profile), Nov 21st, 2012 @ 6:03pm

      Re:

      Your excremental obsession with those holding views contrary to yours is unsurprising, but perplexing nevertheless.

      No, my issue is not that you hold views contrary. It's that you clearly don't. You don't hold any views. If you had a view, you'd state it. Instead, you come here and vandalize the comments with vague asides implying that you have some masterful knowledge, and we're all simpletons. So we call you on it... and you ALWAYS go run and hide, back to your favorite copyright and patent maximalist blogs, where you sign your name and cluck cluck about how brilliant you are.

      But we all know, you're full of shit. If you had a point you'd make it. But you can't.

      You know you've got nothing. And so does everyone else. What a sad and pathetic life you must lead to go around to sites where people who understand these issues better than you do and can run intellectual circles around you... and the best you can do is make vague assertions about how everyone's wrong and clueless, but you can't back up your shit.

      We all know why.

       

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  •  
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    Anonymous Coward, Nov 22nd, 2012 @ 7:18am

    I am generally reluctant to provide citations to "top-level" summaries of cases, but it seems that this may be one instance where a summary may help illuminate why the declarative statement comprising the title to this article and the article to which it links are simply wrong. There is no commonly accepted definition of what comprises a "software patent", so using this term merely adds confusion to discussions. Accordingly, it is imperative for one to realize that court decisions are based upon analyses of claimed subject matter. They are not based upon broad, general categories.

    An informative summary that may be of assistance can be found at:

    http://www.bitlaw.com/software-patent/history.html

    To repeat, it is a summary, and not a substantive analysis of each case based upon the specific facts before the court.

    Now, to be clear, I am not making any declarative statement about "software patents" (again, a term with no common meaning) being allowable. Allowability is determined solely by what has been claimed, and this is done by analyzing what has been claimed against the substantive requirements of Sections 101, 102, 103, and 112 of the Patent Act of 1952, as amended.

     

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      Mike Masnick (profile), Nov 25th, 2012 @ 11:38pm

      Re:

      I am generally reluctant to provide citations to "top-level" summaries of cases, but it seems that this may be one instance where a summary may help illuminate why the declarative statement comprising the title to this article and the article to which it links are simply wrong. There is no commonly accepted definition of what comprises a "software patent", so using this term merely adds confusion to discussions.

      This is a feint, not a real argument. The original article, which I now surmise you did not read, makes it clear what Lee is talking about.

      Accordingly, it is imperative for one to realize that court decisions are based upon analyses of claimed subject matter. They are not based upon broad, general categories.

      Nor did Lee imply otherwise. For you to suggest that he did means you either did not read his article or you are, again, completely full of shit.

      Or, possibly, both.

      Still waiting for something of actual substance from you, but I see I'll be kept waiting.

       

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        Anonymous Coward, Nov 26th, 2012 @ 8:06am

        Re: Re:

        I read his article, as well as at least one earlier one Lee penned on the very same point.

        You were provided a top-level summary of cases relating to "software patents", so at least some information other than mere conclusory statements was provided.

        I still hew to the position that the term "software patent" is a misnomer, and its repetitive use adds nothing to any debate because there is no universally accepted definition of what it means. What is relevant is whether or not the claims, considered as a whole, of a patent application recite subject matter within the scope of Section 101, and if so do they likewise meet the requirements specified in Sections 102, 1103, and 112?

        You say you are still waiting for "substance". Some cases have been cited, the Supreme Court has upheld certain so-called "software patents", e.g., Diamond v. Diehr, and yet you continue to assert that "software patents" are illegal based upon Gottshalk v. Benson.

        Let me state the law one more time for emphasis. If a claimed invention meets the requirements of Section 101, even so-called "software patents", then it is eligible for the issuance of a patent as long as all other statutory conditions are met.

        As for the discussion concerning the CAFC, comment #9 above is responsive, and the constant misstatements about the court and it role as an appellate court vis a vis the Supreme Court do your readers no favor.

         

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          Mike Masnick (profile), Nov 27th, 2012 @ 3:25am

          Re: Re: Re:

          I read his article, as well as at least one earlier one Lee penned on the very same point.

          You were provided a top-level summary of cases relating to "software patents", so at least some information other than mere conclusory statements was provided.


          Then you're either a liar or a bad reader. Lee does not just claim that it's about "software patents" but explains the specific decision in Benson and how it can apply to plenty of software (rather than just software patents).

          That you fail to acknowledge this and instead pretend to play word games and continue to act superior when you're only displaying your near total ignorance of what's being discussed is really quite laughable.

          You say you are still waiting for "substance". Some cases have been cited, the Supreme Court has upheld certain so-called "software patents", e.g., Diamond v. Diehr, and yet you continue to assert that "software patents" are illegal based upon Gottshalk v. Benson.

          And, of course, the differences in Diehr as compared to Benson are well known.

          The problem is that you clearly did not read the piece and spoke from a position of ignorance, like you always do. And, now, having been called on it, you refuse to back down.

          Once again, you are full of shit.

           

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    Anonymous Coward, Nov 22nd, 2012 @ 7:30am

    Let me also add one final comment. The CAFC does not operate independent of the guidance provided in decisions by the Supreme Court. It is tasked with applying the provisions of Title 35 in accordance with Supreme Court guidance. Using Bilski as an example, the CAFC held the claims as unpatentable under Section 101 using its declared "machine or transformation test". While the Supreme Court agreed with the CAFC that the claimed subject matter was outside the scope of Section 101, it rejected the "machine or transformation" test because it was viewed as being too narrow. IOW, it is a fair statement to say that the CAFC was instructed to be more liberal in its Section 101 analyses. Somehow, I have a very difficult time viewing direction to be more liberal as a "smack down". Quite the opposite.

     

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    Anonymous Coward, Nov 22nd, 2012 @ 4:15pm

    Patents are supposed to protect inventions, software or otherwise, maybe the problem is companies' abuse of the system? In this ultra competitive world, we all know its all gone a bit too far, can you blame it on any one party? One thing feeds the other, banning patents is not the "silver bullet", it is a naive proposal isn't it, so inventions in software cannot be legally protected?

     

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    Anonymous Coward, Nov 23rd, 2012 @ 8:51am

    Calculating the odds…

    AC: When can Math be "protected" from someone using it?

    No answer/argument from AC.

     

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    Anonymous Coward, Nov 23rd, 2012 @ 10:37am

    Just one additional comment, if I may. In the majority of cases where I sat down with an inventor to counsel on the advisability of filing a patent application, the outcome was a decision to not file. There are many reasons why this was so. Perhaps being the "first mover" was the overriding consideration. Perhaps the "market" for the invention was so small that filing was a waste of time and money. The list goes on.

    Unlike what other attorneys may advise, I have always, if a filing might be warranted, had performed what I refer to as a "Pre-X" search, i.e., identify relevant prior art before filing an application. However, and unlike most, the searches I commissioned included at the outset a personal meeting with a senior art unit examiner to discuss the invention and secure his/her recommendation what subject matter areas under the USPTO classification system should be examined. This greatly enhances the quality of a prior art search by significantly increasing the likelihood that the most relevant prior art would be located. If a decision was later made to file an application, prosecution was greatly facilitated because the application took these prior art references into accout when drafting the claims, leaving the individual in the USPTO examining the application with a lesser burden when conducting an internal search of the prior art augmenting the Pre-X search, and more time to examine the merits of the claims contained in the application.

    Obviously, more pre-filing considerations were taken into account, but the ultimate objective was determine to the greatest extent possible if a filing was warranted, and if so to secure a meaningful patent at the conclusion of the prosecution process that was focused on the inventor's business objectives/plans.

    The very first lesson I learned from my mentors was that there were generally two types of lawyers practicing in the field. There were those who viewed everyone walking through the door as persons for whom an application would be filed, and then those who viewed such persons as clients in need of impartial business and legal advice. Experience long ago informed me that the latter practice the full gamut of law for the client's benefit, whereas the former oftentimes subordinate the client's needs to their personal desires. Sadly, it is my experience that the former far exceed in number the latter. This being the case, why the former even bothered to attend law school eludes me.

     

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    Anonymous Coward, Nov 26th, 2012 @ 8:08am

    Obviously, "1103" is a typo, and should read "103".

     

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    Anonymous Coward, Nov 27th, 2012 @ 9:07am

    Dear Mr. Masnick:

    My apology as I was obviously misled by the article's title, "As Supreme Court Software Patent Ban Turns 40, It's Time To Stop Ignoring It".

    Likewise, my apology for having read, as I have numerous times before, the claims of the Benson et al. patent that were before the Supreme Court, and the Supreme Court's opinion anent those claims. How I could have missed the "law of nature" exception to patent eligibility under Section 101 escapes me, and I am pleased to now comprehend this legal doctrine that dates back to at least as early as Samuel Morse's attempt to secure a patent on the use of electromagnetism, per se, to print characters at remote locations. My heartfelt thanks to both of you for curing my egregious oversight.

    Of course, this means that I will have to immediately advise certain clients that, for example, most, if not all, of the patents they hold on image and signal processing inventions are invalid because they were long ago banned. It is disappointing that these patents have been used to impede innovation in the market for advanced weapons systems currently a critical part of the US military's imaging systems and weapons arsenal. Likewise, I will immediately recommend that all similar pending applications for new generation systems and weapons be abandoned.

    On a brighter note, I am pleased you appear to tacitly approve of the last two paragraphs at #16.

    With warmest regards I remain

    Sincerely yours,

    AC

     

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      Mike Masnick (profile), Nov 28th, 2012 @ 12:58am

      Re:

      Yay! Snark instead of substance.

      Lee was clear that the court said: "The mathematical formula involved here has no substantial practical application except in connection with a digital computer." And then he notes the same is true of most software.

      You do not dispute that, because you cannot.

      From that, it is quite reasonable to point out that most patents that cover "software" are likely invalid under that ruling as they are nothing more than a mathematical formula that has no substantial practical application except in connection with a digital computer.

      You can play word games, but you still have never responded to that point. Because you can't.

      Of course, this means that I will have to immediately advise certain clients that, for example, most, if not all, of the patents they hold on image and signal processing inventions are invalid because they were long ago banned. It is disappointing that these patents have been used to impede innovation in the market for advanced weapons systems currently a critical part of the US military's imaging systems and weapons arsenal. Likewise, I will immediately recommend that all similar pending applications for new generation systems and weapons be abandoned.


      Being willfully stupid does not help in suggesting that you're not full of shit.

      Though, it's great that you finally admit that your work impedes progress.

      On a brighter note, I am pleased you appear to tacitly approve of the last two paragraphs at #16.


      Me ignoring your crazy comments is certainly not approval. Sometimes I've got more important things to do than argue with an idiot.

       

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  •  
    identicon
    Anonymous Coward, Nov 27th, 2012 @ 9:07am

    Dear Mr. Masnick:

    My apology as I was obviously misled by the article's title, "As Supreme Court Software Patent Ban Turns 40, It's Time To Stop Ignoring It".

    Likewise, my apology for having read, as I have numerous times before, the claims of the Benson et al. patent that were before the Supreme Court, and the Supreme Court's opinion anent those claims. How I could have missed the "law of nature" exception to patent eligibility under Section 101 escapes me, and I am pleased to now comprehend this legal doctrine that dates back to at least as early as Samuel Morse's attempt to secure a patent on the use of electromagnetism, per se, to print characters at remote locations. My heartfelt thanks to both of you for curing my egregious oversight.

    Of course, this means that I will have to immediately advise certain clients that, for example, most, if not all, of the patents they hold on image and signal processing inventions are invalid because they were long ago banned. It is disappointing that these patents have been used to impede innovation in the market for advanced weapons systems currently a critical part of the US military's imaging systems and weapons arsenal. Likewise, I will immediately recommend that all similar pending applications for new generation systems and weapons be abandoned.

    On a brighter note, I am pleased you appear to tacitly approve of the last two paragraphs at #16.

    With warmest regards I remain

    Sincerely yours,

    AC

     

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    •  
      identicon
      Anonymous Coward, Nov 27th, 2012 @ 9:09am

      Re:

      IE9 provided me a warning that my above comment did not go through and asked me to "retry". Apparently the warning was incorrect as the comment appears twice.

       

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    Anonymous Coward, Nov 28th, 2012 @ 8:17am

    The next to last paragraph at #16 is true for all inventions under Title 35. Perhaps there is another provision of statutory law you have it confused with.

    Lee's discussion of the CAFC is pure revisionist history. I have practiced while the CCPA was the appelate body for patent law, and during the entire time the CAFC has existed. Admittedly, there are some who advocate the return of patent lawsuit appeals to as they were before the CAFC was formed, but as best I can determine they are in the very distinct minority. As for his comment that the CAFC has a propensity to overrule the Supreme Court, it could not be more wrong. He is, of course, entitled to his opinion, but it would help immesurably if he actually studied the full gamut of its opinions in all disciplines and issues associated with Title 35.

     

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    Anonymous Coward, Nov 28th, 2012 @ 2:25pm

    I just read my comment and realize I was much to general about the role held by the CCPA. Its jurisdiction was generally associated with matters arising out of USPTO proceedings.

     

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