Re: what does a patent restrict?

On 10/22/1999, Andrew Greenberg <werdna[_at_]gate.net> wrote:
>
> 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)
>
> I don't think that Mr. Lemley's "legal fiction" remark was entirely
> accurate. Certainly, legal fictions were not the theory on which
> statutory claims were found in State Street Bank or AT&T v. Excel --
> both cases addressed claims directed to a process.
>
> Further, the statutory predicate for the Beauregard claims are not
> apparatus "machine" claims, but rather articles of manufacture. The
> structure and utility is all that is needed to support patentability.
>
> For statutory authority, review 35 U.S.C. s. 101.
>

A trivial distinction here:

My "legal fiction" remark was directed towards the Alappat court's statement that programming a general purpose computer with a new piece of software "creates a new machine."

I quite agree with Andrew Greenberg that the law has moved beyond that point, and that in 1999 it does not matter what form (machine, manufacture, process) a computer program claim takes.

Mark Lemley
<mlemley[_at_]mail.law.utexas.edu> Received on Mon Oct 25 1999 - 19:13:16 GMT