Re: what does a patent restrict?

On Thu, 7 Oct 1999, Lynn Winebarger <owinebar[_at_]free-expression.org> wrote:
>
> On Wed, 6 Oct 1999, Andrew C. Greenberg <werdna[_at_]gate.net> wrote:
> >
> > On Mon, 4 Oct 1999, Lynn Winebarger <owinebar[_at_]free-expression.org> wrote:
> > >
> > > I have no idea -- but it's not the developers who need a patent
> > > license, it's the users. The developers only write a description of
> > > the patented device, it's only actually running the resulting program
> > > that creates an infringing device.
> >
> > The truth is far more interesting. With respect to a patent, this
>
> The truth is exactly what I wrote. Software is a written
> description of an algorithm(s), generally designed so that a machine
> will be able to follow it. (Don't know of any cases where descriptions
> that machines can't follow are considered software, but I wouldn't rule
> it out).
>
> The description is not the device. The computer simulates the
> process (or implements it if you prefer) by following the description
> provided by the software. The description is expression (which is why
> it's copyrightable in the first place), protected by the 1st amendment.
> There is no process that is infringing _until_ the computer starts
> executing the expression.
>
> This is all part of the standard theory of computer science (cf
> universal turing machines).

Of course, none of this has anything to do with the proposition that "its not the developers who need a patent license, its the users." Theory of computation has nothing to offer to inform the answer to that issue. Mr. Winebarger is mistaken in this regard for the reasons set forth in my preceding posting, and the message he quotes below:

> > You directly infringe a patent by making, using, offering for sale
> > or selling (collectively, "practicing") THE CLAIMED INVENTION.
>
> Last time I checked, algorithms alone cannot be patented, though
> specific processes they are used for can be. Is my understanding in
> error? As far as I know, you still can't patent expression alone,
> only the process. As I said in another post, contributory infringement
> is a different matter.

Check again. While it is true that "pure" mathematical algorithms (a legal term of art, not the technical term) may not be protectible in the same way that a law of nature (such as the law of gravity) is not protectible, an application of an abstract algorithm defining a process that reduces the ideas to "a useful, concrete and tangible result" is most certainly protectible. See State Street Bank:

     http://www.law.emory.edu/fedcircuit/july98/96-1327.wpd.html

The Federal circuit has made clear that statements such as Mr. Winebarger's are wildly overexaggerating the limitations on patentable subject matter. State Stree Bank was most recently explained in AT&T v. Excel:

     http://www.law.emory.edu/fedcircuit/apr99/98-1338.wp.html

and from here on in, I would expect invalidations on Section 101 grounds to be extraordinarily rare. As to the question whether the stored program can itself be infringing, this matter was put to rest (for awhile at least) once Beauregard claims (claims directed to disks, propagated signals and the like) were allowed. If a developer stores his program on disk, and the claim is directed to the stored disk, the developer is directly infringing.

Accordingly, the law here is not determined by reviewing Machtey & Young, or Aho, Hopcroft & Ullman, but rather by reviewing State Street, AT&T and Beauregard. The claim's the thing that determines whether a developer is a direct infringer, not Mr. Winebarger's claims as to what he believes is "the truth."

Andrew C. Greenberg
<werdna[_at_]gate.net> Received on Wed Oct 13 1999 - 12:29:07 GMT