Re: what does a patent restrict?

On Sun, 10 Oct 1999, Mike Oliver <mikeoliver[_at_]home.com> wrote:
>
> 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.

STAC v. Microsoft involved a number of Beauregard claims, I recall. Microsoft lost its claims based upon noninfringement and invalidity, to the tune of more than $100M.

The claim is not the process of storing information on a disk, but rather the process of storing PARTICULAR information on a disk. The defendant would have to show Section 102/103 prior art storing that PARTICULAR information beyond a reasonable doubt.

Now, here's something you can do. Take a very big disk drive and "publish" all combinations of ascii values of files of a particular size. This will make many Beauregard claims. This would be quite a publication, as the combinatorics are overwhelming, but if you accomplish that, you can probably make a case of non-novelty.

> 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]"
>
> 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).
>
> To me, the storage of digital information that, if actually executed,
> would read on a method claim in a patent, cannot be novel.

This is 100% backwards -- it is the claim that must READ on the prior art for the prior art to be invalidating.

> I could be wrong and here and would love to read a case on this issue
> for educational purposes.

You might want to read Section 2100 of the MPEP and the Examination Guidelines for Software Inventions. Though I haven't studied cases with this issue in mind, it appears that several plaintiffs have succeeded in asserting claims for direct infringement against publishers of software.

Andrew C. Greenberg
<werdna[_at_]gate.net> Received on Wed Oct 13 1999 - 12:57:05 GMT