Re: what does a patent restrict?

On Thu, 14 Oct 1999, Mike Oliver <mikeoliver[_at_]home.com> wrote:
>
> On Wed, 13 Oct 1999, Andrew C. Greenberg <werdna[_at_]gate.net> wrote:
> >
> > 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.
>
> That's not the 'invention'. If I ask the inventor what was his 'idea'
> he will not say 'storing the instructions for a method of analyzing
> code in a multiprocessor, multithreaded environment on a hard disk.'
> (or maybe he will after some lawyer coaching). What is the difference
> between writing the instructions on a piece of paper, saving it on a
> disk, or sky-writing it in the clouds - anyway the expression of it is
> recorded, whether in a fixed medium or in an ephemeral one, is not
> novel.

Of course, this has nothing to do with the question at hand. The vast majority of patents would fail Mike's proposed test. The test for the validity of a claim is not whether the inventor would have related the claim or framework of claims at a preliminary interview without prompting, but whether the inventor's disclosure would support the claims in the sense of Section 112. It inheres in the idea of a computer program in most contexts today that the representation of the program might be stored in magnetic media, so that such a disclosure would likely support such a claim.

> That's my problem with this analysis. The software 'inventor'
> devised a method of analyzing the efficiency of a software program
> in a multiprocessor, multithreaded environment.

But your "problem" with the "analysis" has nothing to do with the patent laws. It simply isn't asking questions relevant to an infringement or validity analysis.

> To preserve it and actually
> use it, *he had to* embody the program in a fixed medium so it could be
> 1. copied, 2. distributed, 3. loaded into ram and 4. executed.

Which is precisely why a claim directed to a magnetic medium configured to store the program is supported by the disclosure of the software invention.

If the medium so configured is new, useful and unobvious in view of the prior art, the claim is valid. The only question then to ask is whether the defendant made, used, sold or offered for sale the medium so configured. Copying or distribution would therefore be a basis for direct liability.

> The person who without authority engages in the first 3 activities
> infringes the copyright in the particular expression (assuming MAI
> is the law as to 3.). I just don't think engaging in any of the
> first 3 activities infringe a (valid) patent claim.

This is simply not the way courts determine whether a patent claim is infringed. Whether the process of loading, storing, copying or using a program directly infringes a claim of a patent entails the following steps:

     (1) construe the claims in view of the specification and prosecution history; relying on extrinsic information only to the extent permissible and necessary under the (baroque and disjoint collection of) case law; and

     (2) determining whether each and every element and limitation of the claim is present, either literally or equivalently.

No more, no less is done. Whether storing a magnetic copy constitutes an infringement depends upon the claim. The question is whether the invention is made, used or sold. If the claim is directed to a disk on which certain program steps are stored, and a defendant stores a computer program with all of the steps on a disk, the defendant can be fairly charged with infringement under applicable law. If the claim were directed only to the combination of the stored program and a computer, and defendant NEVER used the two in combination, but merely copied the program from medium to medium, then liability for *direct* infringement would be unlikely (leaving contributory or inducement as strong possibilities).

The claim's the thing. It is the claim and only the claim, once properly construed, that determines the royalty (direct liability) base. The patent act only provides the language "making, using, selling or offering for sale," and the claim determines what conduct it is that would constitute the infringement.

As noted, I am not addressing the question of what the law *should be*, but rather focusing on what the law most probably is. It is understood that some here do not like this, but that doesn't make it any less the law. The proposed defense wouldn't hold water in a court of law if the plaintiff made an adequate case with respect to an appropriate claim.

> The 4th one (use) infringes the (valid) claims in the patent because
> the person is actually practicing the invention, but it does not
> infringe a 'copy' right.

Well, it is fairly difficult to run a computer program these days without somehow placing the code for the program into RAM. The courts have treated that conduct (copying from disk to RAM) as the infringement.

> But I was born in Missouri so I am thick headed.

Fair enough. We try very hard to advocate these positions, and I would make the possibly credible argument that it is not copying in the absence of binding authority to the contrary myself on the RAM copying issue. I just wouldn't expect it to win anymore.

Andrew C. Greenberg
<werdna[_at_]gate.net> Received on Fri Oct 15 1999 - 12:29:10 GMT