Closing the software patent loophole: Professor Lemley's new proposal

Wright Brothers first flight via NASA
Image credits: NASA
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There's an old saying that everyone complains about the weather, but no one does anything about it. The open source community maintains an active voice of indignation when it comes to the harms flowing from bad software patents. So it's worth noting when a leading patent law scholar proposes a potential solution to the software patent problem, as Mark Lemley recently did in a new paper entitled "Software Patents and the Return of Functional Claiming."

In broad terms, functional claiming refers to writing patent claims that cover the broader function enabled by an invention rather than writing claims to the specific embodiment developed or contemplated by the inventor. In other words, instead of erecting a signpost that points others directly to the invention, functional claiming is akin to building a wide fence to surround the invention in an attempt to claim as much territory as possible. Lemley gives us the colorful example of the Wright brothers to illustrate both how functional claiming works and how it can cause problems.

As detailed by Lemley, the Wright brothers invented a particular improvement to flying machines: they came up with a way of warping a wing to control the direction of flight while turning a rear rudder to counterbalance the effect of bending the wing. In short, they solved the problem of maintaining stability of the plane by having a single cable warp the wing and turn the rudder at the same time. Lemley notes, however, that their patent was written using function language, claiming "means for simultaneously moving the lateral portions [of a wing] into different angular relations" and "means whereby said rudder is caused to present to the wind that side thereof… having the smaller angle of incidence."

A fellow by the name of Glenn Curtiss improved the wing design by using ailerons that could be moved independently of the rudder by the pilot. Unlike the Wrights' design, the ailerons and the wing were not connected. This nontrivial difference notwithstanding, the Wrights successfully asserted their patent against Curtiss and others, despite many of the alternative aircraft having surpassed the technical achievement of the Wrights. Lemley observes that it was not until the government later strong-armed the Wrights into licensing their patents that airplane innovation really "took off."

So how do airplanes relate to the current software patent problem?

Well, first off, a little more history. The Supreme Court eventually responded to the widespread use of functional claiming and effectively took the practice off the table in Halliburton Oil Well Cementing Co. v. Walker 329 U.S. 1 (1946). The Patent Act of 1952 invited functional claims back to the table, albeit with the limitations defined by section 112(f), which limits the means for performing a specified function to the corresponding "structure, material, or acts described in the specification and equivalents thereof." In other words, if you use functional claim language, then that claim will be interpreted narrowly to cover only the specific examples (and its legal equivalents) for performing the function that you have described in your patent application.

Because structure and function can be almost completely separated in computers, software patentees can exploit section 112(f) to circumvent the normal constraints it imposes. Lemley explains this concept well:

"The hardware 'structure' of a computer software invention is…a computer. Generally speaking it doesn't much matter what type of computer a program runs on. That fact has given patentees an opening to write 'structural' claims in which the structure is not novel and does no work. A patentee who claims 'means for calculating an alarm limit' is invoking the limits of section 112(f), and the claims will accordingly be limited to the particular software algorithm or implementation the patentee described in the specification. But if the patentee claims 'a computer programmed to calculate an alarm limit,' courts today will read the term 'computer' as sufficient structure and will understand the claims to cover any computer that can calculate an alarm limit, however the calculation is programmed."

Lemley argues that a simple closing the section 112(f) loophole (via judicial interpretation) on software claims will solve most of the problem described above with software patents. His argument leans on a couple of key observations. First, statutes generally operate prospectively while new judicial interpretations of existing statutes are normally retroactive. Thus, a new interpretation of 112(f) would apply to the hundreds of thousands of existing software patents and not just future patents. Second, section 112(f) equivalents do not apply to later-developed structures, but only to equivalents known at the time the patent issued. Because software changes so quickly, observes Lemley, most litigated software patents today are asserted against technologies that did not exist at the time of patenting. He continues, "[t]his is especially true of troll patents, which tend to be asserted in the last few years of patent life. Once those patents are understood to invoke section 112(f), their literal scope will be limited to the technology the patentee actually designed and equivalents known at the time the patent issued."

So, in summary, Lemley anticipates the result of actualizing his proposal is meaningful change to the claim scope of nearly all software patents. Voila. Just like that.

The obvious advantage of Lemley's proposal is that it would likely be easier to accomplish and to apply in practice than many of the other frequently evangelized solutions, such as abolishing software patents by statute or weeding out bad patents by beefing up examination at the PTO. Another potential advantage, as discussed above, is the potential negative impact on patent trolls.

Lemley offers a prebuttal to the concern that treating software patents as means-plus-function claims will unfairly disadvantage patentees. In particular, the concern is that limiting software claims to one particular algorithm or implementation on one particular machine unfairly restricts patent scope, allowing other companies to implement an equivalent technology while avoiding infringement. His defense seems to hang on the ability to define "an appropriate level of abstraction" for the technology developed by the patentee.

To me, this response seems inadequate because software, unlike ailerons, pipe wrenches, or lawn mower blades, is itself an inherent abstraction. Put another way, one of the key drivers in a lot of software innovation is the desire to abstract a design, feature, or function for increased extensibility and/or manageability. So if the novel and non-obvious contribution made by a software developer is the abstraction itself (embodied in a computer), how does a patent examiner or a court determine the "appropriate level of abstraction?"

While I haven't had the time to consider the answer myself, I suspect the answer might add some complexity to Lemley's otherwise straightforward proposal. Maybe we can't change the weather, but the open source community can surely be part of the software patent solution.

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Aaron Williamson's picture

Your criticism is well-aimed, Jared. The problem of "defining the appropriate level of abstraction" has been around the copyright side of software law since the Computer Associates v. Altai court adapted the non-literal infringement doctrine of Nichols v. Universal to software. Though the Computer Associates "abstraction-filtration-comparison" test (whereby a judge is supposed to, for various levels of abstraction of the program's functionality, filter out the uncopyrightable elements and compare what's left) was widely adopted by other circuits, it's about as open-ended as a "test" gets and never proved a very useful guide. The recent decision in Oracle v. Google suggests that courts have given up on it.

A Nony Mouse 's picture

His defense seems to hang on the ability to define "an appropriate level of abstraction" for the technology developed by the patentee.

OK but in fact this is where we are right now. This is exactly what patent attorneys assert right now as the reason that software patents should be allowed- the software patents, they claim, are hitting the sweet spot between a pure abstraction and something that can be coded around easily.

Sorry, but I think Lemley is just restating the original problem and coming to the conclusion that the line between abstraction and 101-ness (patentability) is being drawn in the wrong place. Really? You don't say !

I have a solution with a strong argument for it's adoption. Failing my solution's rapid, general uptake by our legislative bodies, I present a strategy to make software patents unprofitable. First the solution:

Prior to the widespread assertion of software patents, the software innovation as a category and target of human ambition proceeded at a frenetic pace Currently, in the places where software patents are not permitted, they suffer for no lack of innovation in either software or the industries which naturally cojoin with software and have software as a necessary working part- medical devices, industrial and consumer electronic equipment for example.

In the field of epistemology, the strongest form of "proof" of any given hypothetical is to have the hypothetical thing before you. This is called an "existence proof". The fact that the unpatentability of software has never impeded its software progress forms an effective existence proof that software patents are not needed for software progress. There can be no debate about this, because the thing stands before you.

On the other hand, we know for a fact that software patents do impede progress. The OP cites one such case (good one) but of course there are many many others . Take the case of Runway Finder vs FlightPrep. RunwayFinder was created by a home hobbyist in his spare time. It was a pre-flight preparation software program for use by private pilots. It was offered for free by an enthusiast. The technology itself would be obvious to anyone who was both a programmer and a pilot. Nevertheless a corporation named FlightPrep obtained a patent for the functionality and asserted that patent over RunwayFinder, ending that program's existence. You can read about it here:

There is more to larger story than these individual acts of explicit value destruction. There is an strain of thinking amongst the judges of the CAFC where all patent cases are tried that runs something like this- private property is the basis of capitalism. Places in the world where property rights are weak are marked by poverty and economic stagnation while those places where private property rights are strong have strong economies. Therefore, the more private property we create, the more prosperity we will have. A good way to create more private property is to permit the expansion of 101ness, virtually without limit. These are the IP maximalists, who actually believe that everything, all the water, every cubic foot of air ought to belong to someone and full private property rights ought to be asserted. The commons, to this way of thinking, is just a concession to Communism and if it can't be legislated away, then it should be adjudicated away as much as possible.

So there's a determined, heedless and ideologically driven push towards the expansion of 101ness on the part of the small set of judges in the CAFC and the result of this determined and really just warped world view is what we'e been living with and how we got to where are, a kind of Alice In Wonderland IP regime.

The Constitution reads that the PURPOSE of issuing patents in the first place is to further "the useful Arts and Sciences " . Failing that, if it doesn't have that effect, then the raison d'etre, the legal justification for this category of patents vanishes.

All of this just happens to slip the minds of patent attorneys who are of course the most certain and direct beneficiaries of the software patent madness, and you can read on their blogs where they blithely assert all kinds of inanities from "there is no such thing as a software patent because any software patent could be hard wired into a chip" to "software patents are a X-billion dollar industry and if we banned them, huge amounts of value would be destroyed overnight!!"

Remove software programs as a category of patentable subject matter. That is the solution. The EU had no problem identifying software patents from other kinds. Whatever the code does, whether it's control a machine or paint pixels, it's not eligible. Done.

Failing that I propose the following. Every programmer worth his or her salt has at least 5 patentable ideas a week , present standards prevailing. Many programmers probably have that many or more in a day. Let's get a little seed money and do some patenting of our own. It works like this. Programmers who despise software patents contribute their ideas to a an organization dedicated to creating a patent nuclear warhead. They sign away their rights to any patent or money that comes from ideas they submit and the organization in turn contractually commits to asserting the patents it obtains from its members against any company who uses a patent offensively, no matter how small or large that company.

The economics of it work like this. Seed money and donations gains us patents with the properties that they have a high likelihood of being upheld in court and are as blocking and abusive as possible, especially in industries in which patent trolls reign.

With our first win, we plow that money into more litigation and more patents. A virtuous circle ensues in which wins empower us more, net us more attention and more and better patents. Consider who is one our side. Virtually all academics for instance,. The vast majority of programmers. Not a few lawyers. Certainly sympathetic wealthy benefactors are out there.

It doesn't have to confine itself to software either. The level of abstraction that software patents represent is present in other industries as well. for instance, plot devices in novels and TV shows are ripe for patent activity of this type. The more we spread the pain around to industries in society broadly, the more people suffer and the more innovation is stifled. Making society more broadly live with the real world consequences of its choices is the fastest and surest route to legislative action.

I would guess I have at least another patentable idea a day if not more often, and that's with a strong dispositional aversion to software patents. If I was motivated to think on this topic full time, if I sincerely believed it was to society's benefit to be more creative in this sphere, I could do better. I am certain that I am perhaps the least amongst many more who could likewise become very productive in this regard.

So let's begin. Let's start something. Let's make trouble, because if you're a programmer it's guaranteed that whether you 're looking for it or not, worrying about it or not, trouble is going to find you.

Just like it found RunwayFinder.

Perhaps a reader knows a good place to take this idea.

stites's picture
Open Source Champion

Your statement of the problem is excellent. Your solution is based on us outspending our opponents in the software patent wars. That just isn't possible nor do we even want to try doing so.

Steve Stites

A Nony Mouse 's picture

We cant' outspend them to start with but we don't have to.. We only have to do what trolls do- win some cases and build up a war chest. Since we spend money ONLY on obtaining patents and suing people and also all our labor is free- excepting attorney's work- we're more efficient- something our targets will have to appreciate even as we give them what they have coming.

We can't start out the size of Apple, but we can rapidly get there. A few thousand , then hundred thousand, then a million here, a million there and then we've got everything we need. We have the power to sustain lawsuits against suitably weak targets. We have the best most inventive, creative minds in practice and in academia feeding us new, highly innovative WMD. It's a positive feedback loop. If Congress takes it upon itself to ban patent trolling, then we "sell" a "kit" that gives instructions on how to assemble all our IP together into some unlikely, totally useless gadgets which utilize only our IP qand no one elses.

That's our product and no one is going to tell us we don't "mean it". That's how the law works, as any attorney will tell you, we can put it 100% within any "patent troll" boundary Congress tries to create , especially since buying said plans would be one way for programmers who have an opinion on this topic to "express themselves".

This is doable. What's more, it's a statement that the press will eat up and Congress will pay attention to. There is exactly nothing about this plan that is either impracticable - the way "we should all do this!" internet plans inevitably are or unrealistic- this is, after all , exactly what patent trolls DO, except most of them buy old IP. This is done in the world. We can do it.

You just have to be fed up. You have to be fed up with the implied threat of patent lawsuits and fed up with being told that you can live and work only as a serf- at the pleasure of companies like FlightPrep and Apple.

Your position as a programmer today is you can must present yourself and your ideas as labor and gifts to the feudal lords of software development, who keep armies of lawyers and arsenals of patents ready to destroy you the first time you challenge them . Other than that, you can find another line of work to go into.

That's just a bare statement of the most obvious facts of the world we live in. I for one can't live like that. I can't program everyday knowing that it will all go up in a puff of smoke the first time I get a lawyer's letter in my mailbox.

I'm mad as hell and I'm not going to take it anymore.

stites's picture
Open Source Champion

Your plan to create a profitable software patent empire is doable if you are the only entity doing it. If everyone is doing it then the software patent business becomes a less than zero sum game where everybody loses, including you.

Steve Stites

A Nony Mouse 's picture

Remember the goal. The goal is not to build an empire, and we don't have to. The goal is to force the software patent-wielding companies to bear the negative costs of the system they created. Right now, they can externalize those costs, onto me.

The goal is to make the cost of software patents exceed their benefit for all parties. To do that, we need to force those costs back onto the companies. The way to do that is to fight a guerrilla war, where we pick and choose the time place and nature the battles.

We can bootstrap ourselves with smaller wins as finances allow . The reason we can do this is because by the rules of the current system, we are generating legitimate intellectual property which comes with rights which we can assert. Those same right cannot be asserted against us, since nothing we sell will include IP from anyone else, by design.

Seen in this way, the system favors us and not them.

Note this also- it's a merely a matter of civic politeness and on the part of IP attorneys that all the humanities - music, writing, graphic design aren't being molested by the patent system. It certainly has nothing to do with the potential scope of patents. For instance, Apple's successful assertion that it owns rounded corners on phones as a dress patent can easily be extended to everything having to do with graphics for any product whatsoever.

IP lawyers know that if they were to start down this path, the reaction from the larger society would we swift and certain. So they restrain themselves. It's a conscious, calculated and shared strategy on their part not to assert patent rights in some domains. We on the other hand have no reason to show such restraint.. Just the opposite. Creating and asserting patents into largely virgin domains which are in every way isomorphic to the patents that we are being forced to live under is a great strategy.

Consider what happens if we build a patent that in every legally significant way mimics and is isomorphic to the type of patents that Apple asserted against Samsung. Suppose we bring this patent suit against a suitably sympathetic target. The court will either uphold it or throw it out. If it upholds it, the societal outrage spreads against this kind of patenting, and we win. If it throws it out, then the case is a precedent for software patents to be thrown out, and we win.

In fact, the shortest path to our goal may be just this strategy. We carefully and methodically build a single, very basic nuclear-level patent, guaranteed to take out all software patents, either through getting rejected by the court or being upheld by the court.

Right now, the IP attorneys have us cornered in a dark room where no one can see what the're doing. No one really understands what software patents are, what kind of value destruction they entail and what effect they have on society or what else the overly broad interpretation of IP means. So these attorneys are effectively operating outside the purview of society. They've found safe harbor in the CAFC and are running riot, looting the place.

But let this disease spread throughout society, it's like throwing lights on. Now everyone can see and everyone understands what's going on. This is exactly what they don't want. They want things to stay as they are... this kind of IP being applied to software, where they get paid big bucks. They don't want it applied more broadly, in smaller cases between disputants who 1) have no real money to give them and 2) bring into bold relief the absurdity of the entire IP intellectual framework and 3) create bad press by involving sympathetic litigants.

We can do this. We can build that metaphorical bomb and we can set it off. It's the only way we're ever going to live are free people with the freedom our predecessors had to innovate, to create value, to further progress by bringing costs down and increasing human productivity.

A Nony Mouse 's picture

Patent attorneys are essentially operating as a parasitic life form which has successfully attached itself to its host, software development, and is proceeding to siphon off all nutrients and sustenance from it. They need to be driven out of the host before they kill it. It's really that simple.

Wayne Borean 's picture

But the problem isn't just software. Most, if not all hardware patents fail the U.S.P.T.O. rules. Remember KSR v. Teleflex? The same issue applied in that case.


Unidentified's picture

Page 24 of the PDF shows the patent thicket in graphic form, but that graphic seems to be shifted over important text rather than in the space allocated for it on the bottom half of the page. My display was Chrome (current) on Mac OS 10.6.8, and also "Preview" (same Mac).

A Nony Mouse 's picture

It may be so, I am a engineer so I have to limit myself to that topic. Anyway it seems Congress is in session , (which means no one is safe), and looking at ways to combat "patent trolls". Of course since Apple and Microsoft are the biggest most abusive trolls around, it's unlikely the problem will actually be SOLVED, but what they do could change the tactics people who want to combat software patents have to pursue. So it's a wait and see point for us.

Brian M's picture

General the whole patent system is well passed its sell by date, there are very few truly unique discoveries. Certainly in electronics and even in pharmaceuticals - everything builds on someone else's work even the Wright brothers work was not completely unique!

Maybe patents ought to be severely time limited based on perhaps the work/cost involved and on their uniqueness. Anything related to fast moving technology a year, and for pharmaceuticals a suitable time based on investment with max of 5 years.

bobc4012's picture
Community Member

I agree with your assessment that it is well passed its sell by date, however, I am not in agreement with time limited patents for S/W.

S/W patents were not allowed prior to the 1980s. Likewise, S/W Copyrights were not in play until the 1970s.

S/W capability has generally been limited by H/W capability (although we use to have a saying "if the problem is finite, it can be programmed"). So, the concept of being novel and non-obvious typically fails - once the H/W becomes more capable, it makes it easier to produce the S/W to solve an "obvious" problem that wasn't easily implemented prior to the H/W advancement.

If you go back to the 50s, 60s and even 70s, much of the S/W was "public". You could get copies of the source and see the implementation. Much of the later S/W developed after those time periods were mostly a further extension of the earlier S/W. A lot of the that later S/W became "patentable".

IMO, writing S/W is more akin to writing a book (or a series of books). I have no problem allowing for Copyright protection - but even that should be given careful consideration in court cases. If two book authors write a similar paragraph for a novel in a specific genre, but the stories themselves are not identical, then no Copyright infringement has occurred. As I understand it, there have been court cases of "patent infringement" just because 2 S/W programs had implemented (a) nearly identical subroutine(s) (probably remembered from some CS 101 text book).

A Nony Mouse 's picture

Brian M ,

IMO the argument to change the length on the lifetime of a patent for the purpose of fixing the system is a kind of trick or window dressing or calculated deceit that people who want to continue abusing the patent system see as the price they may have to pay in order to go on doing exactly what they're doing.

It's what Jeff Bezeos suggested, the patenter of the infamous "one-click" patent. That's a fact worth weighing.

What results from limiting patent lifetime? First, the same shitty patents issue forth from the patent office. Amazon's One Click is a good example.

Second, patent holders will simply respond by increasing their patenting activity in order to pack their legal team's pipeline with patents they can claim their competitors have violated. Of course they will, because 1) they can afford it and 2) the same financial incentives are still there.

It still suppresses competition from upstarts and individuals who aspire to be something other than a patent troll, that is, who want to create value in the form of a, you know, working product.

Ordinary people are no more able to sustain protracted litigation against well funded (or just better funded ) opponents than they ever were.

It would have made no difference to RunwayFinder because you have to take into account how the litigant's behavior changes in response to a change in the law.

Instead of just running RunwayFinder out of town and leaving it at that, FlightPrep could have pursued a lawsuit against RunwayFinder whether RunwayFinder withdrew the product from the market or not. In the eyes of the law, RunwayFinder will have broken the law and a punishment must be forthcoming.

At that point, RunwayFinder has no out. It can neither run, concede, nor roll over
and play dead. FlightPrep IS going to beat RunwayFinder to death so that, when the patent runs out, , RunwayFinder won't have any resources to come back and threaten FlightPrep's market.

FlightPrep could seize all of RunwayFinder's assets and leave the unincorporated owner of the product with a huge judgement he can spend the rest of his natural life working to pay off.

The "new" system you propose also still allows large corporations to extract huge sums of money out of equal sized competitors, in effect flushing that value out of the system and STILL making it less likely at any given point in time that anyone will try to innovate.

Nothing would have changed if Apple's verdict was for a patent which lasts just a year. A billion dollars is a billion dollars and the threat of that kind of lawsuit as a result of doing *something* / *anything*, is still ongoing. .

And a billion dollars is still a billion dollars even if the verdict comes years after the patent has run out. You're not going to tell people that they have to until the patent runs out to finish litigation because that's not a reasonable request. It's not possible under any system, and it's certainly not the litigant's fault that the wheels of justice grind slowly, as they must for fair results which retain the respect of the governed,.

So you still have the same incentives to produce a stream of crappy patents.You still have companies able to suppress Joe Developer at will. You still have outsized jury verdicts. You still have lawyers firmly attached to the underbelly of the IT industry, sucking sucking sucking....

Granted, in the Apple case, the verdict seems to have been the strong opinion of one particular juror, but that's beside the point since that is part of what can happen at any time when you go to trial.

Most of these cases go first to a "certain" court in Marshall, Texas, because that particular district has made a cottage industry of finding for patent holders. Someone has to keep all those diners in business, right?

After that, it's off to the CAFC where the judges put down their dog eared copies of DeSoto's "The Mystery Of Capitalism" just long enough to find in favor of the plaintiff and give the system yet another whack in the ass with their gavel.

It doesn't work. What works is stopping software patents. The EU did it. New Zealand does it. There is exactly zero reason the US can't do it too, especially since doing so serves the purpose behind patenting in the first place- innovation and value creation.

I am not going to join my argument with those who say we need to do away with patenting for all industries because I think it takes an expert in an industry in order to come to that conclusion and I am only an expert in one industry, my industry- software.

Different industries may or may not be served by patents and may or may not have problems unique to how the patent system plays out in their industry.

I hear the cry of "kill all patents !" as as reactionary as the "IP everywhere!" of the IP maximalists. Where is evidenced based reasoning in either of those positions? Nowhere. They're positions taken bomb throwers, by people who have an ideological axe to grind and think any evidence which contraindicates their programme is a kind of temporary sanfu which will work itself out presently.

Brian Balke's picture

Might we discover that the software patent holders are going to blow themselves up? By making such broad claims, could they be creating conditions under which entire areas of technology will be liberated permanently from patent controls (as "prior art") when the initial set of patents expires?

Phil Doble's picture

It's really part of the bigger problem of an out-out-control legal profession, gaining power and bleeding the rest of society by the use on "Case law" or legal precedent. Logically, for any example of case law to be valid requires that the court's decision is correct. Any such guarantee requires infallibility. And courts are demonstrably fallible (witness the various miscarriages of justice that come to light on occasions). So the basis of case law is invalid. Case law should itself be outlawed.

A Nony Mouse 's picture

case law is the weakest kind of law and subject to being overturned by Legislative and Administrative law making. This is not my field of expertise. I don't see how it can all be legislative.. it's just too much law making for Congress to ever get done. The judges are close to the cases already and society has invested in them the presumption of good judgement. Of course, that turns out to not always be the case, but we'd have that in any other arrangement where humans were involved.. I take CAFC as a good example of bad law from the bench, In theory, SCOTUS could overturn. In fact, it's not gonna happen anytime soon so the CAFC serves as eh defacto court of last resort. Too bad for us.

When things get like this, it's time for people to get directly involved. That's my idea. The goal is to create a patent that is 1) completely intuitively objectionable on both moral and economic grounds 2) completely and legally isomorphic to what all software patents share. Ideally, we'd be invading a space where IP lawyers have decided to keep a "hands off" approach because of the societal blowback in attempting to patent "that kind of thing". What kind of thing? It bears some thought. But we're creative types.

A Nony Mouse 's picture

An example of why we need case law comes to mind. This is not rebut anything you said, but only an attempt to make you feel batter about the really, generally, pretty good system you have.

Maybe you followed Apple v Samsung. What that case came down to in part was a question of prior art and thus disclosure. Congress can only legislate broadly on those two things. It can't decide the merits of particular, as yet non-existent case.

So even though Congress created laws specifying how and when prior art and disclosure figure within patent law, there's still the issue of deciding if prior art exists and disclosure has occurred for any specific pair of litigant.

When the court renders a judgement, they of course are obliged to detail how they came to the conclusion they came to: "The defendant's claims of prior art are rejected because of this this and this..."

That is what case law is. It's a finding on the claims made in a particular case owing to the ultrafine, specific details that case. What specifics there was about the defendant's prior art that invalidated it is the kind of case law that gets created.

But we have no other way to create this law. Congress could never have written what the judge found in this hypothetical case into law before the case existed. Every case is different in some way and those that aren't different, where the case is clear cut given previous court interpretations, those cases never go to trial. Basically what happens there is it's the lawyer's job to explain to his client that the client is a damn fool So those cases don't create case law but are rather directly governed by it.

It's literally impossible to have a system of jurisprudence without case law being created. If really bad case law gets created or contradictory case law is created by different courts, then that's when appeals happen and or Congress gets involved.

I hate software patents and the IP lawyers who push them, I think they're borderline sociopaths, but overall our system of justice is actually an awesome awesome thing, the end product of hundreds of years of work by a succession of the world's finest minds with the ultimately fine details worked out to an astonishing degree. I am not saying it's always applied properly in every case because idiots are equally distributed in all professions and mostly, people are just liars, but the overall system of jurisprudence which is our cultural heritage is well worthy of respect. It rivals science as a monumental human cultural achievement.


technology did not have prior
- it's literally impossible for any legislative body to formulate laws so specific that they make deciding the merits of any case automatic

UncD's picture

To: A Nony Mouse,

I've got the first 100 bucks in seed money in hand. Let me know where to send it!

While I have your ear, I'm betting there'd be more than a few of the open-source / freeware software producers out there that would help spread the word, say with a short write-up that one would see upon installation of their software (as they do now with "Ask, Google Chrome, etc opt-ins during installation). Maybe a link to this article too. If memory serves me, Bill Gates once sent an open letter to the software / hardware community many years ago stating his case for licensing. Put on your creative thinking caps and run with it.

An Open range fosters the Winds of Change. (and vice versa)

A Nony Mouse 's picture

I am perfectly serious (in case anyone is wondering) . The way to do this is on Kickstarter. The time to do this is after Congress passes whatever "reform" act they're going to pass, since anything we do needs to take into account whatever new set of contingencies they create. That's not going to happen until after the election, no doubt, They passed some in 2011, but it did nothing of any use. However, Techdirt reports that there's more reform in the offing. It may be useless as a device to improve the patent situation, but it can still impact strategy.

Meanwhile , the EFF has a a site where you can make your opinion known. I don't agree with all of what the EFF recommends (shorter terms on patents as partial solution) but we have to join forces and focus on what unites us. They have the obligatory petition and it's a good place to connect with like minds:

jashan's picture

I've just registered on this site and opened an account to reply to this ;-)

I really like your idea and hope that you'll get this started and am happy to participate in funding this and spread the word. I'm glad you're already considering Kickstarter to get this started - crowdfunding seems like the perfect way of doing this.

Personally, I'd very much prefer IndieGoGo, though. It just seems to have a better "feel" to it (and I'd like to avoid Amazon payments which Kickstarter uses … and funny enough, while checking out how payment really works on IndieGoGo I just ended up supporting "Gray State" which appears to be a pretty interesting and at least somewhat related film project … and yes, all you need for IndieGoGo is a credit card - no annoying Amazon stuff involved).

The nice thing about crowdfunding is that you can use the platform also for crowdsourcing, i.e. to find people who are willing to support the project. I guess a few lawyers that are just as fed up with the patent troll system as software-engineers are should exist somewhere and would certainly help a lot with such a project.

I believe it would be very important to "distribute the power". In other words: Have a lot of individuals with a lot of patents all collaborating towards a common goal. That way, the patents generated this way cannot be abused (because the crowd would have to agree to that kind of abuse).

Let me know when the campaign is up! I'll gladly spread the word!

A Nony Mouse 's picture

I will have to look at IndieGO then. I suppose we could get going before we know exactly what the new legislation involves insofar as we could collect ideas. The first thing to get is a legal agreement which defines rights and obligations between the parties. This is a legally binding agreement whereby people agree to contribute their ideas for a specific purpose and the organization agrees to use them for a specific purpose and no other and rights are assigned and all this kind of thing. The concept is simple from a distance, but the details require the expertise of a lawyer.

Unidentified's picture

I thought patents were about giving the person/entity who came up with a new and unique solution to a problem the chance to benefit financially for the time, effort, and resources that they expended developing the solution and bringing it to market. That as the patent holders, they are granted the privilege to exclusively market/sell that solution for a limited time before others can start copying that solution and selling it own their own behalf. By taking away the patent privilege you are in effect stifling innovation. After all, who wants to work if they are not able to benefit from the fruits of their labor.

bobc4012's picture
Community Member

The original requirement for a patent was it had to be "novel", "non-obvious" and "advance the state of the art". Most (maybe 99.9%) of the S/W patents fail the first two requirements. Even though the requirements were relaxed for S/W patents, solely "advancing the state of the art" is, by itself, not sufficient - but that seems to be the sole criteria of the USPTO.

To make a simplification, if you had be doing spreadsheets by hand and then computer H/W came along and you found you could write a S/W program to accomplish the same thing, should that be patentable? The purpose of the computer is a way to automate manual efforts such as the spreadsheet - therefore, it is not novel and certainly obvious.

Now if patents had been allowed back then, and I wrote the first spreadsheet S/W and patented it, then I could play havoc with my seven savage lawyers, claiming anyone developing a competing product using "cells" was infringing upon my patent.

It is interesting that some S/W written originally on mainframes later became patentable on PCs and then again on I-Pads, Androids, or whatever, simply because the environment "slightly" changed.

Keith's picture

As I understand it, this is NOT the primary purpose of patents at all.
My understanding is that the primary purpose of patents is not one of protection, but of disclosure and the advancement of ideas by taking ideas from others and using them as inspiration for your own ideas. This isn't merely copying, but is advancing and developing.
In return, the person with the original idea gets a period of monopoly in which to exploit that idea, but that monopoly only applied to that specific idea.
Note here I'm talking about "inventions" which would also apply to software developments too. There is, however, a lot of blurring of the lines between patents, design patents, trade dress, etc. The trouble is these really are different things, but are being treated as the same thing by lawyers and courts which leads to further problems.

A Nony Mouse 's picture

Simon Phipps had a good article on this article (going meta..) which bears reading. It addresses, in part, as Lemley did, the idea that patents exist to induce the inventor to reveal his *mysterious* methods in order to advance the art and what relation that has with functional patents and software patents.

Lemely is right on, correct? It's just that somehow for some reason the legal world - including the courts- is already well aware of the problems regarding functional patents and has chosen a side- the computer is the means and that's good enough.

What lawyers actually say is that getting a patent on a very very specific process. - an algorithm embodied in a specific piece of code, makes it trivially easy to code around, That argument of course begs the question of whether software should be protected by patents at all, which it shouldn't.

Most lawyers I think would argue back at Lemley that by defining patents the way he proposes is really abolishing patents and substituting copyright. Well perhaps what Lemley is proposing is not quite as concrete, but it might as well be since it results in IP anyone can easily re-route around, so what's the point, argue these lawyers. And that seems to be the way the CAFC has seen fit to see it.

But the truth of Lemley's argument is not in dispute, and this article gave me a perspective on the historical nature of functional patenting I didn't have.

The basic issue is- what level of abstraction shall we patent at? The answer America and AU and Japan have standardized on is- a very very high level indeed. Whatever makes corporations and lawyers the most money is best.

The EU and other places have rejected that level, but their political processes are less corrupt than our own and they tend to act in favor of their citizens' economic well being as well as their corporations'.

Unidentified's picture

This clearly demonstrates the inability of the PTO employees to fulfill their job functions. Perhaps, the need to read Aristotle's Categories to learn something about how to classify things.

A Nony Mouse 's picture

Regarding the idea of us creating a patent which is

1) as abusive and offensive as possible and

2) legally isomorphic to software patents in every way

in order to force the issue , this may already be in process, although not intentionally one supposes:;

Can you patent yoga pants? :

The thing is, it where the entire HAS to go by necessity. The degree of abstraction of the "invention" which is permitted in patents is wrecking havoc in the software field, but is equally applicable under our unitary patent system ( all patents in all industries are treated equally) to any and all other forms of human endeavor.

So I could patent a plot device or a plot itself, since these are 1) novel (by definition, all new works are novel) and 2) "advance the art" insofar as it didn't exist before, and now it does.

To the reader who made the point that the inventors need to be rewarded in order to incentivize invention I have to say that just because patents incentivize some individuals doesn't mean they have the end effect of for society as an incentive for innovation. How can that be?

If they disincentivize more of the same types of cfreative people than they incentivize, then they are a net loss to innovation. If the patent itself tends to block further innovation , then it's a net loss to innovation. This is the reason why facts and laws of nature cannot be patented. It's not that mathematicians work any less hard than other types of inventors. It's that patenting at that basic level would have the effect of blocking innovation and creating ridiculous monopolies over whole swaths of human activity.

In fact, there's a good argument to be made that mathematics is a free invention of the human mind and not a "discovery". The reasons it's considered as a "discovery" is largely historical- starting in ancient times, people gradually came to believe that the world WAS mathematical, so that by the time the US patent system was being defined, that was the accepted world view. But that world view is wrong, as Russel and Whitehead showed in Principia Mathematica.

As Russel put it, " mathematical knowledge is a special case because, being trivial knowledge of analytic truths, it scarcely counts as knowledge at all. It is knowledge of truths which are “all of the same nature as the ‘great truth’ that there are three feet in a yard”.

In other words, the fact that there are three feet in a yard (and all other mathematical facts) is nothing more than a restatement of the "fact" that humankind has decided, by its own free will and caprice that there shall be three feet in a yard. It's not a natural fact and it's not a fact about nature.

Mathematicians work very hard inventing things, things like alternative geometries, and set theoretic notions, which for all intents and purposes they effectively pull out of their asses. for no larger reason than they felt an itch they anted to scratch, as we say in software development.

Yet they are not granted patents. Yet they work What's more, industry ultimately finds their novel inventions useful.

So also with software development as others have pointed out. It used to not be patented, and yet during that same time all the fundamental inventions- von Neuman machines, ,OSes, threads, graphics, things so complex and basic most people know nothing more about hem than they know about the engineering that holds up the buildings they work in, then onwards to word processors, GUIs, spreadsheets, CAD programs, and finally to browsers ...all of these things were invented , starting in the 1800s and proceeding onwards and all of them without patents.

So as an empirical fact then, it's not true that innovation will not proceed without patenting. Just because something incentivizes some people doesn't mean that without that thing, no one is otherwise incentivized, including the erstwhile patent holder herself. .

And it doesn't mean that its overall effect on the system is one of incentivizing innovation either, It just means it incentivizes some people to work for a particular reason. The people who drop out and can find no other reason to work if that incentive disappears are perhaps not the people we wanted to incentivize in the first place.

Anyway the yoga pants scandal is just the sort of thing that has to happen, at least because we are going to force the issue upon the courts. But maybe IP lawyers and their clients just can't help themselves and, like a true virus, will ultimately kill their own host......

Pat's picture

As I understand it, one must defend their patents from all known infringers or loose it. If the patent "nuke" really is so versatile, then you must launch it at pretty much everybody, you can't pick and choose.

There's an even simpler way though.. take all those ideas N-ideas-a-day and release them into the public domain. No litigation needed, just a place that can can be used to legally establish the idea, that it has been released, and its date of release.

However, it really doesn't matter. Patents expire after 20 years. We're simply in the gold-rush phase of software patents, and after some years, all those protected ideas will be public domain. We just need to make sure that when they expire, everything that they were interpreted to cover is in the public domain.. none of this the-whole-pie-was-protected-until-it-expired-but-now-that-its-expired-only-a-tiny-slice-is-what-was-protected.

Bob's picture

Actually, there is a simpler way. Set up a central clearing house for "Technical Disclosure" papers/bulletins/documents. What this would do is negate some of the requirements for a patent. Companies do this in order use that idea without going through the cost of obtaining a patent, but preventing another company from patenting that idea. It becomes public domain and establishes prior art.

A Nony Mouse 's picture


Several points:

How does this influence Congress to change the law? Because changing the law is our goal, not securing ideas safe from patenting.

For a number of reasons, it's not true that public disclosure safeguards ideas in the way you envision anyway (not that that is our goal, because it's not) .

First, the term "public disclosure" is not well defined for this purpose. What constitutes public disclosure , just like what constitutes "prior art" is in the end some case-specific finding by a court, the USPTO and/or a jury that prior art or public disclosure was made.

It's decided on a case by case basis by people who may not share your or my opinion or point of view on your "disclosure".

So disclosing all these ideas is not going to automatically enter them safely into the public domain (and remember, that's not our goal anyway).

What it will do is give people who read them good ideas, that they then are free to seek patents for. It can also give them ideas sufficiently lateral to the original to empower them to seek patents on the lateral idea,resulting in the end state as having patented the original idea.

For instance, using your logic you might have come to the reasonable conclusion that since the WIMP interface itself is not patented, that that would be that, but as we now know, you'd have been wrong.

There are thousands of patents around WIMP interfaces that make writing any particular WIMP interface at all literally impossible without violating someone's patent: Adobe owns floating tool pallets, etc etc etc.

It doesn't work,

Second , suppose everyone agrees that disclosure occurred. What exactly do you think was disclosed? Because what you think was disclosed and what will ultimately be found to have been disclosed by the USPTO, a jury or a judge is once again a thing which can only be known at the end of a process, either at the USPTO and / or ultimately at trial.

At any rate, it's quite likely to be adjudicated in such a way that you, the originator, are not at all satisfied.

Just ask Samsung. how cleanly and clearly the existence of prior art ultimately intersects with justice .....

So we can't stop software patents by making cool stuff public and we can't even safeguard the things we make public against patenting.

We, the majority of programmers, researchers and people with an active interest in civil society need to take affirmative, aggressive action to change the system itself.

What are our options? So far, lobbying Congress has resulted in nothing of any worth. The primae fascia absurdity of the system itself has also made barely a dent in Congress's motivation.

It's not clear that Congress even grasps what is happening and if they do, that they have the freedom from lobbyists to take the one action needed - exclude software from patents.

A large part of Microsoft's and IBM's market capitalization is bound up with software patents. and the licensing around them. The lawyer who is credited by some with starting it all, one Marshall Phelps, first worked at IBM where he conceived of the idea of patenting software. He then moved to Microsoft bringing his (self serving, short sighted, dysfunctional) world view in tow.

Now we're all here.

These companies have bags of money stuffed with large, rarely-seen-in-circulation denomination bills which they throw at Congress when they want something. That's how laws get made and that's how justice is defined. We have to deal with that.

If we want to change things, we have to make explicit to society at large the Alice In Wonderland level of absurdity and wanton value-destruction inherent in this economic vision. Right now our opponents can point to all the money that's exchanged because of software patent licensing.

What are we left pointing at? An absence, a hole, of non-participation in the economy and yet another hole of uncreated and stillborn value.

Guess who wins that argument with Congress?

We need to spread the pain around the economy to more participants so that the call for abolishing patents on what amounts to ideas becomes an unstoppable, deafening din in Congress's ears. That is what will work.

bobc4012's picture
Community Member

One point of interest to your reply. IBM was one of the biggest users of "Technical Disclosure Bulletins" to protect its H/W and S/W development and processes. It was using it as a means of protection when it could not get a H/W patent. It also used it as a means for protection prior to S/W being patented and, later, in the same manner for S/W.

There is a brief discussion of this in the Wiki, .

It may sound silly to us, but there have been cases of patent infringement solely based on the similarities of certain subroutines - e.g., garbage collection (you could probably have 50 out of 100 programmers produce a nearly identical subroutine) - even though the programs perform a different process.

I know it sounds ridiculous, but years ago, I was requested to provide background for the lawyers in such a case. The actual base algorithm came from a pre-patent era program. The algorithm author had actually written a Technical Disclosure on it, which came in handy.

Personally, if I was calling the shots, I'd put out an "Executive Order" voiding ALL S/W patents. This might toss a small number that one might consider totally legitimate, but it would get rid of the tons of bad ones. However, I would not ban Copyright, which I believe would be the appropriate way to go.

A Nony Mouse 's picture

The model most people have of patent litigation / IP rights is of course simpler than reality as your post shows.

It's not enough that what you did is in the public domain, because when it comes down to it, what's in the public domain is not EXACTLY what you did, and through that loophole, in come the lawyers.

I'm willing to bet that any litigation IBM's lawyers initiated never went further than letters to the "infringer" and perhaps a phone call.

That's the "iceberg" aspect of patent litigation, 99% of it (literally probably even more but you get my point) is just threatening letters which result in a market withdrawal that no one ever knows about because it never amounts to anything more than private correspondence between the parties- there are not court filings in the public record.

Then there's the even more insidious effect of people simply, perhaps individually, deciding to not make a product, pursue an idea, or even pursue a career.

Can anyone argue that THAT level of value destruction is not the actual goal, and effect, of software patents? One filing, no further time or lawyer fees needed...

To your comment, every *single* thoughtful and technically knowledgeable person I know who's ever opined on this topic has come independently to the same conclusion you came to- software should be protected by copyright; software should not be protected by patents.

I wonder if that is not Lempel's real opinion also, but he sees his tactic as a politically plausible substitute

bobc4012's picture
Community Member

A Nony Mouse said
"It's not enough that what you did is in the public domain, because when it comes down to it, what's in the public domain is not EXACTLY what you did, and through that loophole, in come the lawyers."

Years ago, when I wrote a Technical Disclosure, it described the actual implementation - in both general and specific terms. The code was released as a product and in the public domain. If someone came along and used it and then claimed a patent on it (or their entire implementation, which included it), they could not come back on us for patent infringement. Our company did this quite often (even before S/W patents were allowed - essentially as a safeguard against the possibility of future patent rule changes). We did not "blue sky" and say lets write a TD on some possible implementation, it was always on some actual implementation. As I previously mentioned, I did have knowledge of one case of where that happened and our company prevailed because of that TD (and proof of implementation in an in-use product). Presumably the "infringing company's" developer must have either seen our TD (or some of our public documentation) and used the idea and at some later point someone else must have "discovered" we were using that idea and did not do their homework. This occurred back in the late 80s (or 1990/91). Regardless, as soon as the query came down, those of us familiar with the TD and where it was used pointed it out and the lawyers showed the judge and the case was quickly tossed.

BTW, I can't comment on what IBM lawyers might have done or not when they found patent infringement against their IP. However, I suspect in some instances it went to court - probably moreso if they were the ones accused of infringement.

BTW, once S/W was allowed to be "Copyrighted", in the 70s, all our source code (and compiled - machine - code showed the Copyright statement. Why it took so long to allow S/W to be Copyrighted is anyone's guess. S/W our company wrote in the 60s did not (and, to my understanding were not allowed) have Copyright statements.

Anyway, since S/W was being written and put into the public domain back in the 50s (and, possibly, the late 40s), 30 years had passed before the "brilliant decision" was made to allow the "horses to be patented, long after they had escaped the barn". I wonder how many of the existing patents would be invalidated due to prior implementation.

A Nony Mouse 's picture

Pat said: As I understand it, one must defend their patents from all known infringers or loose it. If the patent "nuke" really is so versatile, then you must launch it at pretty much everybody, you can't pick and choose.

This is not the case. You can pick and choose your litigation or elect to not defend the patent at all, you still have full IP rights. The rule you're thinking of applies to trademark infringement, not patents.

Pat said:

There's an even simpler way though.. take all those ideas N-ideas-a-day and release them into the public domain. No litigation needed, just a place that can can be used to legally establish the idea, that it has been released, and its date of release.

It doesn't achieve our ends or any useful ends. It's not even clear it puts it in the public domain. There's a huge difference between an idea or even a working model and a patent and that chasm can only be crossed by a patent attorney.

So if we supplied the ideas, patent attorneys would be only too willing to take them and turn them into patents, for the benefit of their clients- perfectly legal.

Pat said:

However, it really doesn't matter. Patents expire after 20 years. We're simply in the gold-rush phase of software patents, and after some years, all those protected ideas will be public domain. We just need to make sure that when they expire, everything that they were interpreted to cover is in the public domain..

There's no limit to what can be patented under the current system and there's no reason to think that "all basic or useful software patents" will somehow be issued at any given point in time. It's an ongoing activity and there's no reason to think it will end anymore than new software will stop being written.