Federal Circuit case renders many broadly written software patents invalid

http://www.patentlyo.com/patent/2011/08/if-the-software-method-is-not-patentable-then-neither-is-the-computer-readable-medium.html

by grellas • 15 years ago

215 72 15 years ago

patentlyo.com

btcoal• 15 years ago

"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.

nitrogen4• 15 years ago

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.

dminor• 15 years ago

> 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• 15 years ago

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

marshray3• 15 years ago

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.

monochromatic• 15 years ago

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.

JVerstry• 15 years ago

"(...) 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.

sehugg• 15 years ago

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

dctoedt2• 15 years ago

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

dctoedt2• 15 years ago

The court's opinion in this case (the CyberSource case) is at http://www.cafc.uscourts.gov/images/stories/opinions-orders/....

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• 15 years ago

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• 15 years ago

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.

pcc2• 15 years ago

ianal, but would it not stand to reason that if the algorithmic method exists to incorporate/address computability specifically; then by implication the "human mind/pen&paper" criteria could only pass if performable under the same constraint?

For example, if the purpose of the method specifically relates to real time graphics processing (ie the real time constraint is a fundamental aspect of the method) -- then the expectation would be that the pen&paper test would have to be able to achieve the same constraint (ie calculable in real time) for it to invalidate the claim of the method?

dan-k• 15 years ago

It seems to me like basing patentability on time constraints actually imposes a distinction between hardware and software, regardless of how you feel about their logical interchangeability. For example, an algorithm for real time graphics processing would be just as impractical to run on ENIAC as it would be to do with pencil and paper, but there's no reason you couldn't port the software. So if the validity of the patent is based on its usefulness in a real-time application, it would have to be something like "running algorithm x using computer system y to achieve the desired result in z length of time." Including both the software and hardware used would be the only way to ensure that the time constraint was actually met. I think it's obvious that very few (if any) software patents could meet that criterion.

Daniel_Newby4• 15 years ago

There is no software that we cannot put into hardware - literally!

Indeed, as I have often argued too. And even "virtual" software can readily be implemented in human scale electromechanical devices, as with the relay-based computers where you can watch the memory bits change and even reach in and flip them with your fingers.

"If a method can be performed by the human mind alone, or with paper and pencil..."

However the issue with this patent is that it was too broadly written. The claims apply to all possible implementations, including pencil and paper methods, not just implementation with a logic machine. That is unpatentable.

ChuckMcM• 15 years ago

I think it is a positive step forward and may be useful for the folks who are litigating against some of the more egregious software patents.

That said, I don't believe '1-click ordering' would survive this test, and if not that would be a good thing in my opinion.

Natsu3• 15 years ago

It's very weird to see human capability factor into it. I mean, a person very well COULD compare two images pixel by pixel, it just takes a rather long time. I'm pretty sure I have done things like that on occasion for very small images, in fact.

skorgu5• 15 years ago

Yeah, this is patently (ha) absurd. I can't think of an algorithm off the top of my head that isn't feasible to do manually for small values of n.

kwantam3• 15 years ago

Absolutely. A method shouldn't be patentable just because it's too boring for a human to perform a mindless computation over and over again. Multiply a 3x3 matrix is simple for me to do by hand; multiplying a 1000x1000 matrix is no different in process but is much more time consuming; should the latter be patentable? (In my mind the answer is clearly no.)

I can see where there might be some concern that you could claim anything that could be done on a computer could also be done more slowly by a human with a pencil and paper. Frankly, I don't have much of a problem with this: automating simple tasks doesn't seem like an invention, it sounds like a land-grab. Certainly there are nontrivial tasks that a computer can perform but which cannot be done well enough or fast enough by a person, e.g., closing a control loop in software (delay leads to instability; if you can't perform a computation fast enough, you cannot perform the control function, thus, certain such tasks could not be performed by a human with pencil and paper).

It's arguable whether even something like this ("implement an equation... but really fast!") really ought to be patentable, and while I'm a named inventor on at least a few patents in this area, I'm doubtful. Of course, my employer has no such qualms, and is happy to hold said patents.

ScottBurson• 15 years ago

Agreed. Even in the case at hand, it seems like the patent holder could argue that a human couldn't perform this task at Web scale.

russell• 15 years ago

If this is upheld, I see all software patents being eventually voided. "as a practical matter" can be attacked by using induction. Do an image transformation on a 10x10 image. Do it again on 11x11. Argue that the patent is invalid by induction. Perhaps someone actually has to spend a week the first time on a large image to "prove" induction.

Real time doesnt exist. It means accomplishing a task within a specified interval. If you can do a task in 1 hour and someone else can do it in 30 minutes. It seems to me that it is then possible to argue that doing the same thing in a microsecond on a computer is not patentable.

Perhaps the judges will need a little focused high school math and a lesson on Turing machines.

nitrogen4• 15 years ago

Is there any precedent for courts recognizing mathematical or logical proofs? I was under the impression that courts, by their design, rely entirely on appeals to authority in the form of expert testimony.

For that matter, would it be possible to design a court system based on a fully modern understanding of logic, proof, induction, etc., rather than the seemingly ad hoc system we have now?

gbhn• 15 years ago

For better or worse, courts are pretty immune to this particular form of induction. That's why you can copyright the sequential bits of a movie, but not the number "0110".

daimyoyo• 15 years ago

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

philipkimmey• 15 years ago

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.

mckoss2• 15 years ago

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.

kylewpppd• 15 years ago

I would find your claim to be slightly outlandish. Even if we assume that you could simulate anything known to humankind with software, you would still need to invent a thing to properly simulate it.

mckoss2• 15 years ago

I'm not claiming I could INVENT any machine with a software process. Only that one could take any patent granted for a machine, and build a total software simulation for the described machine. By the judges' logic in this ruling, the software simulation of the machine is unpatentable. But what's the difference if the machine is implemented with atoms instead of bits?

cperciva• 15 years ago

... and this is why logicians tend to make poor lawyers. It doesn't matter if an argument is logically sound; what matters is whether the argument is convincing, and saying "sure I can do this with pencil and paper... it will only take a hundred billion years" isn't going to convince anyone.

buff-a2• 15 years ago

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.

6ren4• 15 years ago

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.

6ren4• 15 years ago

> 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.

Federal Circuit case renders many broadly written software patents invalid

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