Re: what does a patent restrict?

On Fri, 15 Oct 1999, Mark Lemley <mlemley[_at_]mail.law.utexas.edu> wrote:
>
> Like it or not, though, that's the way the law has developed. It
> doesn't matter whether the medium in which you record the program
> is novel -- it just matters whether the program is novel.

Actually, I believe the novelty question will derive from whether the image stored on the medium is novel. A prior art database of elephant clothing accessories, if it were byte-for-byte identical to the program so stored on the disk, would probably suffice to invalidate the Beauregard claim.

While this case hasn't been tested, it is well-established in product-by-process claims that the product will not be patentable, even though the process is novel, if the product does not independently have new, useful or unobvious structure.

> If it is, the court will say (perhaps in a legal fiction) that
> embodying the program in that medium "creates a new machine"
> configured differently than prior ones.

Doubtful. I think the relevant subject matter category is article of manufacture -- the disk itself, so configured.

> Of course, after State Street and AT&T, it's not clear that we even
> need to bother with this fiction anymore. It might be that the program
> itself is patentable regardless of the medium in which it is embodied --
> including paper. [And patent claims to computer processes are probably
> valid even though they don't specify a medium in which the process will
> occur].

Right, but the article of manufacture claim (indeed the computer apparatus claim) is independently useful for expanding the royalty base, even when the process is patentable. A software manufacturer may not have practiced the process except in a permissible exprimental capacity, but will itself directly infringe (avoiding the extra elements of Sections 271(b) and (c)) by making, using, sellling or offering for sale the article of manufacture (disk or propagated signal) or by assembling the apparatus, by loading the computer program on their machine, even in an exerimental capacity.

> Mark A. Lemley http://www.utexas.edu/law/faculty/mlemley/index.html
> Marrs McLean Professor of Law mlemley[_at_]mail.law.utexas.edu
> University of Texas School of Law
> Of Counsel, Fish & Richardson, P.C.
>
> Effective December 1, I will be a Professor of Law at the Boalt Hall
> School of Law, University of California at Berkeley.

By the way, congratulations on your appointment to Boalt Hall -- that is QUITE a faculty they are assembling!

Andrew C. Greenberg
<werdna[_at_]gate.net> Received on Sat Oct 16 1999 - 13:25:15 GMT