Re: what does a patent restrict?

On Sun, 10 Oct 1999, Mike Oliver <mikeoliver[_at_]home.com> wrote:
>
> -and- Bruce Hayden <bhayden[_at_]ieee.org> wrote in part:
> >
> > However, article of manufacture claims are different. If such a
> > claim is well written, it can cover reproduction of the software.
> > These typically are written to cover floppy disks and other media
> > containing the software.
>
> In both cases, only if the claim is valid and enforceable. And, I
> don't believe very many 'article of manufacture' claims that cover
> storing a software program on a disk are valid. It is not novel to
> store a computer program in digital format on a fixed disk (in fact,
> it was novel exactly once, along time ago). It is also not novel to
> transmit it electronically between two fixed disk storage devices,
> whether it is inside a local machine or over a public digital
> transmission.

But then loading a program into a computer isn't novel either, but once it is so loaded, it is now considered a new machine.

> For kicks (hey, its raining here) I searched for patents Bruce Hayden
> has drafted. I did not look at them all (he's been busy), but I'll
> use this one for an example: "Multiple context software analysis" Pat
> No. 5,799,143 (8/25/96). All of the claims except No. 13 are method
> claims that describe a method of analyzing the efficiency of a software
> application in a multiprocessor, multithreaded environment.
>
> Claim 13 reads in part:
>
> "A machine readable media, comprising: a plurality of computer
> instructions for establishing a first data structure in a computer
> operating system for describing a predetermined context set [and
> so on, through to output]"

Actually, I don't remember this one -- which may be a bad sign. I will have to look it up.

> So, I take it that if Mr. Hayden's client had found someone that was
> illegally duplicating the software and giving it away (lets say the
> pirate bought a license that is legit, and then circumvented any copy
> protection system and copied the software and distributed it for free)
> he would assert that the act of making copies of the machine readable
> media directly infringed claim 13, notwithstanding that the pirate
> never actually used, made or sold the software in the copy process?
> (I concede Andrew's points on indirect infringement but I am only
> interested in direct infringement issues here).

Well, that is the general idea.

> To me, the storage of digital information that, if actually executed,
> would read on a method claim in a patent, cannot be novel. I could
> be wrong and here and would love to read a case on this issue for
> educational purposes.

I would too. The closest I think we came was In re Beauregard, where I believe IBM was appealing just this sort of case. Unfortunately (from a precedence) point of view, I believe what happened was that the USPTO withdrew its opposition, and the case became moot.

Presumably, you are talking about a situation where the article of manufacture and the method claims for example shared novelty (for example by being in the same patent application) -- just to keep the novelty question easy.

> And, to tie it back to copyrights and open source, this distinction
> could be important. Say that an open source coder created a program
> that analyzes multithreaded software applications, and that when
> executed, would be an infringement of one of the method claims in Pat.
> No. 5,799,143. Say also that he did it without even knowing about the
> patent (a very likely scenario). He then posts it up under the RPM
> finder site, that is mirrored to a hundred other sites (many of them
> educational). Ok, the programmer is an infringer in the U.S. because
> he made the program (assuming the patent is valid and enforceable).
> All of the mirror sites have the open source code that, if *executed*
> would infringe the method claims. They permit the code to be
> downloaded anonymously, and for argument, lets say they do not know
> or have reason to know anyone who downloads it will infringe the
> patent (no contributory or inducement to infringement). Perhaps the
> downloaders will merely analyze the code to see how it works and use
> snippets in some other, non infringing program.
>
> Is the act of maintaining the open source code "in machine readable
> media" and permitting distribution of the open source code a direct
> infringement of claim 13?

I think technically, if such claims are valid (of course), then just maintaining it might not be, once put out there. However, allowing distribution might be some form of indirect infringement (contributory, etc.) since those downloading would (according to the presumptions here) be direct infringers.

Now the mirroring etc. might be direct infringement.

You are correct that this does look quite a bit like copyright analysis. However, keep in mind that patents and copyrights protect quite different things in software. If a part of a program is truly protected by copyright, then that portion is probably not protected by patent. That is because for a very great extent, patentable subject matter is filtered out during determination of copyright protection (under the abstraction/filtration/comparison analysis for software in a majority of circuits -- other circuits do something similar). Similarly, patents protect functional aspects of software, as opposed to the expressive. Again, I would suggest a sort of filtering is appropriate.

For that reason, I do not think that patents and copyrights are exclusive of each other in software, but rather complimentary. I am thus also not bothered by trying to give the patentable elements of software the same type of protection as copyright does through the use of judicious claiming, since the two are not protecting the same thing.

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The preceding was not a legal opinion, and is not my employer's.
Original portions Copyright 1999 Bruce E. Hayden,all rights reserved
My work may be copied in whole or part, with proper attribution,
as long as the copying is not for commercial gain.
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Bruce E. Hayden                      bhayden[_at_]acm.org
Phoenix, Arizona                     bhayden[_at_]ieee.org
                                     bhayden[_at_]copatlaw.com