Re: what does a patent restrict?

On Thu, 21 Oct 1999, Mike Oliver <mikeoliver[_at_]home.com> wrote:
>
> As an admitted non-patent prosecution lawyer (trying to learn from
> your explanations), I just find it interesting that from this
> relatively basic proposition, we end up with the 'legal fiction' that
> a software program is a 'machine' even when it is embodied solely in
> the medium in which it is stored for distribution (and I distinguish
> culpability of a software publisher from that of a software distributor,
> so the observation that a number of publishers have been liable for
> direct patent infringement is not surprising)

Actually, to be a bit more precise, you really have two different types of claims here. When all that you are claiming is the software written to media, then you have an article of manufacture claim, instead of a "machine" or apparatus claim.

You need to go back to Allapat which pointed out that loading software into a general purpose computer changes the behavior of the general purpose computer, making it into a special purpose computer. So, if you look at the computer system as a black box, the black box acts differently, and thus is legally a different machine.

The Beuregard, or Article of Manufacture, claims are really what you are probably talking about, where loading different software on media changes the behavior of any computer loading the software from such media. I will admit that this is a bigger jump than the Allapat special purpose computer. However, it does to some extent follow the Allapat thinking.

> I took a look at the MPEP and it says in part:
>

....
>
> In my (admittedly to this point failed) effort to understand this issue,
> I read the above statements to provide that a software invention can be
> claimed as an article of manufacture if it is defined in terms of the
> hardware, or the hardware *and* 'specific software'. This appears to
> explain your comment that it is the specific novel, non-obvious software
> code plus the disk (hardware) that can be claimed as an article of
> manufacture.

Well, that is pretty much how you claim it.

> So (if I have this right) in the case of a pure software invention, in
> non legal-speak, U.S. law provides that the making, use, sale, offer
> for sale or importing of a disk containing the specific software
> embodiment of the invention infringes a properly drawn article of
> manufacture claim.

Yes, if properly drawn, at least as the law is understood today, since copying the software onto such media is "making" the article of manufacture (or if done outside the U.S. is imported).

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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
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Bruce E. Hayden                      bhayden[_at_]acm.org
Phoenix, Arizona                     bhayden[_at_]ieee.org
                                     bhayden[_at_]copatlaw.com