Oracle v. Google shows the folly of U.S. software patent law

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Software patents

Oracle v. Google has all the ingredients of an epic, high-stakes courtroom battle: a damages claim of up to $1 billion over the use of Java in the popular Android operating system, testimony by both Larrys (CEOs Page and Ellison) in the first week alone, and, of course, the disposition of some interesting legal issues, not the least of them whether APIs can be copyrighted.

But, more than all of that, the case serves as an important teaching moment, illustrating much of what doesn’t work in our patent system.

That system is of course enshrined in the U.S. Constitution, which gives Congress the power to "To promote the Progress of Science and useful Arts, by securing for limited Times to ... Inventors the exclusive Right to their ... Discoveries." But when we start talking about software patents, we really only see barriers to innovation, often in the form of expensive litigation and licensing fees. What gives?

For starters, software often does not require the type of heavy investment that should result in a 20-year monopoly. Instead of expensive laboratories or years of testing for FDA approval, for example, you often just need a coder and a computer. Even complex programs don’t require 20 years of exclusivity to recoup their investment. Software patents are often not even necessary for successful businesses: Facebook and, yes, Google — never relied on software patents to grow their early businesses.

Software patents are also notoriously vague and difficult to understand, making it impossible for small inventors to navigate the system without expensive legal help. And that brings us to the most dangerous aspect of software patents: litigation.

It turns out that software patents are nearly five times more likely to be the subject of litigation as other patents. In fact, lawsuits surrounding software patents have more than tripled since 1999, and they have become part of the price of doing business in America. Take Spotify. After realizing much success in Europe, Spotify launched its U.S. product in July, and just weeks later it found itself facing a patent suit.

And it’s not just established companies like Spotify and Google — small start-ups and even individual inventors find themselves on the opposite ends of threats and lawsuits. The patent system is supposed to benefit society and those who create, but instead the real winners in this game are the lawyers.

Perhaps most troubling, the patent system fails to recognize how people create and use technology. Software is fundamentally situated as a building-block technology. You write some code, and then I improve upon it — something the open source community has figured out. Google’s use of Java in its Android OS also demonstrates how innovators create, by making its own product and and incorporating some elements of the Java language (which, incidentally, Java’s creators have a history of supporting). And when those two come together, it results in an incredibly popular product, here the Android OS.

In the fast-changing world of technology, where a kid coding in his basement can write a program that can change the world, it’s important that this ability to use and share is protected. It’s also worth noting that if Oracle wins on its copyright claims, whole programming languages could become off limits, a dangerous proposition indeed.

Oracle’s attempts to shut this down, whether by patents or copyrights, are just the last in a depressingly long line of rights holders attempting to cut off important and popular downstream uses of their products, even when those uses may be legal (such as a fair use) or beneficial to society at large.

This is not to say that intellectual property rights shouldn’t exist, or that owners of those rights should not be able to enforce them. However, it’s time to rethink our policies on software patents, and, depending on what happens in Oracle v. Google, the extent to which we allow copyright claims to cover the functional programming language that builds the backbone of much of the technology we use today.

Patent litigation has become little more than a tax on innovation that drives companies from the U.S. market and discourages investment in the next Facebook or tomorrow’s Twitter. In this case alone, Google and Oracle each will likely spend tens of millions of dollars (and that’s before any potential damages are levied) — money that could and should be used for further innovation and growth.

Congress recently passed patent reform legislation that wholly lacked provisions to curb the pernicious effect posed by exploding patent litigation, which harms innovation and our recovering economy. Oracle v. Google is unfortunately not the exception, but the norm. A total reset on software patents is long overdue.

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Julie Samuels is a Staff Attorney at EFF, where she focuses on intellectual property issues. Before joining EFF, Julie litigated IP and entertainment cases in Chicago at Loeb & Loeb and Sonnenschein Nath & Rosenthal. Prior to becoming a lawyer, Julie spent time as a legislative assistant at the Media Coalition in New York and as an assistant editor at the National Journal Group in D.C.


All software patents are illegal. All software are algorithms; this is a proven fact. This is the work of Alan Turing and John von Neumann. Patent law clearly states that algorithms cannot be patented, so, all software patents are illegal.

You state: "Patent law clearly states that algorithms cannot be patented, so, all software patents are illegal."

Please provide a citation to the law that supports your assertion?

He probably meant to say "math" not algorithm, and "case law", not patent law. The actual statue just says: <a href="">
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title [35 USCS Sects. 1 et seq.]. </a> The precise definition of "process" is in question.

Previous case law established that "math" was not patentable, but then went on to also establish that "software" as part of an overall process did not prevent the overall process from being patentable. (A reasonable decision.) Further cases went on to effectively make "algorithms" patentable on their own.

Clearly, the courts did not understand math or algorithms, because the rulings are contradictory - as any mathematician will tell you. This contradition needs to be resolved by yet more case law (or revised statue), and many of us are making the case that yes, math should not be patentable (opinion), and software is math (fact).

I wish it were the case that algorithms cannot be patented, but dont feel that has ultimately been established to be the case.

Looking at the conduct of US patent legislation/enforcement from the other side of the other side of the pond we don't know whether to laugh or cry---actually it's usually both, at the same time. The situation in the US is completely out of hand, and made even more pernicious by the US seeming to believe that the rest of the world belongs in its legal back yard---not sensible.
Julie, well done on a clear and simple analysis; get it to the judge in Oracle v. Google, maybe he/she can bang heads together. On the other hand perhaps they should be allowed to slug it out, burn millions, and when they are both on the ropes, and we're all completely fed up with the whole farce, people who should know better will finally start to see sense. I won't hold my breath though (sorry, I'm a cynic when it comes to money and egos).

Well, I don't necessarily agree with the term algorithm in this situation, simply because you could use the term in almost anything (a set of rules for solving a problem in a finite number of steps).

I do however agree that this, as usual, is a dangerous situation for all concerned. What it does is splinter a once unified group of software developers into thinking they too could be a target if they pick the wrong language to develop a solution in.

The funny part is how JAVA was going to change the globe with its' open structure and ability to be used anywhere. Oracle's purchasing SUN Micro Systems was a clear shot over that bow. I saw the news that day and thought to myself uh-oh here it comes.

I mean, imagine if IBM, Digital, HP or any of the other old big boys had decided that languages on their platform was somehow proprietary. FORTRAN, COBOL, Assembler??? We would have never gotten out of the dark ages of the 3GLs.

Ellison just needs to back off and add another BILLION to his number of objects that rely on the JAVA platform, and be happy with that. Instead, he is killing the goose that laid the golden egg.

It was Alan Turing who defined what an algorithm is: any Turing machine that halts runs an algorithm.

And the ability to prove that a Turing machine-modeled-process halts is clearly laid out in the seminal paper by.... Oh, wait, that's one of those famous unsolved (unsolvable?) problems in computer science. So, I don't know that this is a particularly useful way to define an algorithm; certainly not for legal purposes.

From the point of view of patent law, is a process typically patentable in, say, industrial processes? That is, you can patent a given drug molecule, for instance, but could you patent the steps to synthesize it? My impression is that you could not. Am I wrong?

I believe it is the other way around -- a drug cannot be patented by structure, but only by process to create the structure.
Process is most definitely patentable; that's what large percentage of patents are about.

Unless, of course, the law clearly states that certain processes cannot be patented, like software.

You may want to review Supreme Court case law, such as Diamond v. Diehr, State Street v. Signature Financial Group, and Bilski v. Kappos. You may find that your assertion that Patent law is clear on software patents to far from clear.

Not sure where I am on this topic, but a couple of thoughts to ponder. 1. How is "You write some code and I improve on it" different than "You make a widget in your garage, and I improve on it"? 2. How long does a new technology last these days? Most don't last 5 years. Would a short term, easy to get software patent work? One, two, five years?

It's different because all software is algorithms. It doesn't matter what else it is. The law states that algorithms cannot be patented. It doesn't matter if it's a process. It's an algorithm and algorithms cannot be patented.

BUZZ.... repetition.

Repetition of simple truths is necessary until everyone gets them. Examples of people who haven't got them yet: the patent office, lawyers, judges.

A big proportion of patents are, in fact, improvements upon prior patents. That a big part of what patent research is about. You have to name all the patents that your work is relying upon; it's called "prior art". When a patent holder collects royalties, all unexpired prior art is entitled to royalties as well.

This is a great point. Remember that the positive side of a patent is that the information is released to the public for use by others. (Yes, you have to pay the inventor.) Without the release of the information, no future innovation could happen.

A very real alternative is to hold the information as a trade secret. (Think Google search algorithm. We may be able to figure it out, but not because release the information.)

Is reform of the system needed? Yes. But lets be reasonable.

Why shouldn’t inventors or companies be able to recoup on their investment?

I agree that software patents are problematic and probably should not exist. But why is copyright protection not valid? I have not read the copyright pleadings in the Oracle v Google case. So your concerns maybe case specific. But it would seem that an author of code should be allowed to exclude use of his or her work, especially if that use if for commercial gain. Furthermore, copyright grants certain exception to the exclusive right, such as fair use.

The investment in software intellectual property is not as large as in bio-medical, pharmaceuticals, or other scientific research intensive fields. But there is an investment nonetheless. Shouldn’t the kid in the basement be able to recoup his or her investment before a competitor comes in a uses the technology?

Yes, he should be able to profit from his work. The problem is, he never does. Only the rich can afford to protect patents, so the kid in the basement is SOL.

Congress will eventually have to fix the patent system because not doing so will eventually destroy our ability to compete. Buts its going to take a few more of these Oracle/Google dust-ups before anything gets done.

"Buts its going to take a few more of these Oracle/Google dust-ups before anything gets done" .. LS

Well said, that's where the right to vote for women and blacks got started.

Repetition is just circular reasoning. Law states that algorithms cannot be patented(?), but is software just an algorithm? Yes/no? Definitions? Shouldn't a the author of a completely new, unique algorithm be able to benefit from his/her work in creating it? How about Matlab?/Windows?/AppleOS?/DOS? Computers program yes. But different from anything else available. Weren't they protected? Shouldn't they be? A lot of time and money went into developing them. If the developers can't get paid for their work, what's the point? If someone develops a software program while being paid by university faculty salary, and wants to put it in the public domain to share with others, that is good, but if someone wants to make his/her career (paid life work) writing programs, shouldn't they be paid for it? Isn't that good to? I don't know the answers to these questions, just tossing them out for thought!

Yes, programmers should be paid for their work. But computer companies do not make money from software; they make it from service. And they do not require patents to do so. Red Hat and Canonical make an awful lot of money from free software because they sell service, not software. People don't want just software; they want support. IBM knew this. 90% of their income came from service contracts to support their machines. Selling computers was just a sideline for them. Software patents do nothing but stifle the industry.

A specific implementation of an algorithm is already protected by copyright. Copyright also protects "minor" alterations to your work, and derivative works. That answers most of your questions.

The problem is that algorithms are abstract, and patents are intended to apply to concrete solutions. That is why the original case that opened the door said that the use of software did not prevent a concrete solution from being patentable. This has been twisted since to say that software itself can be patented. An analogy in copyright would be "copyrighting" all stories about boy wizards, as opposed to a concrete expression of such a story.

A concrete piece of software is protected by copyright. Every software "patent" granted is abstract and kills entire categories of creative expression. In fact, it now kills *all* creative expression. At this point, every line of code any of us writes violates some software "patent". It is just a matter of when some troll gets around to suing us, or whether we have any counter patents in our arsenal that the plaintiff is also violating (should the suing company have an actual product - hey, at least Oracle isn't a troll).

"consist solely of mathematical operations without some claimed practical application"


What I extract from that is that if someone writes software to create a specific graphical display of some numerical information (for example temperature and salinity profiles of the Gulf of Maine) it would be patentable, but if it was to calculate sea water density from a set of temperature and salinity data, it would not.
But what if the standard research/industry techniques to calculate density needed approximately say 10,000 lines of code, and someone said, "Hey, I've been working on this problem for the last 2 years, and I've come up with a clever program that can do it with 200 lines of code and save everyone hours of processing time". Where does that fall? What does he/she get for two years of work? Might it depend upon if they were doing it for their thesis on an NSA grant which requires public domain? On their own eating PB&J's because they were so in to it that they gave up a paying job to do it?

You might have missed the point. What the article says is that you can't get a patent for revealing the secrets of nature. Rather, patents are awarded for solving some need in our human society. An algorithm that proves a fundamental fact of mathematics can't be patented, but an algorithm that lets you use electronics to heterodyne cell phone frequencies can; the former is a revelation about the natural world, the latter is a practical application that solves a specific problem. I'm not a lawyer, but that is my best understanding of what was said in the cited article.

Thank you for the citation. You may want to review Supreme Court case law. That case law will illustrate some of the complexity of the law around patents.

The length of a patent is actually very flexible. For example: historically a patent for a furniture design might only have a length of 6 months to 1 year. This represents one manufacturing cycle. So the manufacturer gets a design exclusive during the first season the product is on sale and thus a clear advantage.

If we consider software in a similar vein, few of us would object to a patent term of 6 months. That is enough time to establish a clear lead in the industry, yet not so long that it stifles creativity. In our accelerated information age that is about equivalent to a 20 year term in the industrial age.

I wasn't aware of the "design" type of patent. Is that something like a copy write or trade mark? I thought those were much longer term than patents. You are on to what I was saying about shorter term software patents. Long enough to give the author some benefit, but not so long as to stifle creativity.

Several years ago I researched the work of industrial designer Henry P. Glass and found that his "D" patents issued in the 1950's have varying terms. Some were for 3-1/2 years, others for 7 years and a few for 14 years. See US Pat. D183605, D182805 and D174688. He also filed utility patents such as 2227855 which had the standard 20 year term. I'm just guessing, but the varying terms issued at the time may have been based on the prior art and the extent to which a design was truly different. Today all design patents have a 14 year term.

A design patent applies only to the appearance of an object, whereas a utility patent also applies to the way something works. By this definition it would be pointless to use a design patent for software. It would seem an entirely new class of "S" patent would be in order and a grandfathering transfer process would be required to bring old software patents into the system.

It truly is a waste of taxpayers money to have such an adversarial system that requires so much in the way of government resources and it would be in the best interests of society as a whole to clean up this mess.

Software should be copyrighted, just like books. Someone shouldn't be able to steal your exact code and use it as their own, but if they independently code a product to solve, in general, the same problem, that should be legal.

However, 99 years past the lifetime of the writer/performer is crazy, too.

The whole point to patent and copyright is to allow the inventor/writer to benefit from their work for a REASONABLE amount of time, and then after that period, allow the work to be used for the greater benefit of all.

There is a difference between art and science. I am a scientist. My wife is an artist. What she dreams up out of her own head is hers and hers alone, even if inspired by thousands of years of other artist's works. A novel, play, movie, is a unique creation. Changing a few words or scenes doesn't create a new work of art. An artist should have the exclusive benefit of their creativity for the rest of their life.

Software, even if published in a copy written book, should be judged as a technology or an invention, rather than art. It is more a "description of natural phenomena" than a unique creation. If you code 2+2=5 instead of 2+2=4, it becomes absurd. The book itself may have a copy write, but the program described in the book should be available for others to use after whatever software patent expires. You shouldn't photocopy the book, but should be able to use the code.
Just my opinion.

First, please note that I espouse a view that software be covered by copyright because the act of creating it is similar to writing a book, not that it be covered because it may have been published in a book. Also, that few would buy a program that claimed 2+2=5, so the absurd aspects are inherently self correcting.

So, let me make a couple of what-if scenarios, numbered below:

1) Say that your colleague in the next lab over wrote the very first LabView program for the control of an Atomic Force Microscope and patented it. You're saying that you should have no right to create your own program, but would be forced to instead buy his? Since your lab is in the business of research because it eventually makes money, you're colleague would have a claim against your invention's worth if you wrote and used your own program, even if it was completely different.

I would submit that software is much more like a book than an invention. Are there elements of invention in software? Absolutely, but then there are elements of invention in writing, as well. Software is made up of small primitive operations, just like words are used in a book. Is it novel? Yes. Is it an invention? Yes, in the same way a book is. But your program versus my program should be separately copy-writable. All software patents do is stifle development by those without access to lawyers. It's said that one cannot write ANY piece of code anymore without infringing someone's patent.

2) Say your wife becomes a renowned for her works, a Picasso of her times. Should she be able to only allow her works to be displayed in venues that charge $1000 a person to view? Certainly for a time, but for her entire life? Would that not deny the appreciation of her art and it's contribution to culture to an entire generation or more who would not be able to afford it?

The constitutions verbiage for copyright goes something like: "To promote the Progress of Science and useful Arts by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."
I would submit that the real purpose of patent and copyright law is to ensure that writings and discoveries eventually make it into the public domain, to be enjoyed by everyone. I don't argue against the idea of patents and copyright, merely that they are being misemployed. Without copyright and patents you would be employed as a Master in a guild that heavily guarded it's secrets and the free exchange of scientific ideas that occur today would likely not exist.

I was a software developer for many years and that's my opinion.

Hey lordgeep, good points.

2) Say your wife becomes a renowned for her works, a Picasso of her times.

I sure hope so!

Should she be able to only allow her works to be displayed in venues that charge $1000 a person to view? Certainly for a time, but for her entire life?

OK, fair question. I don't know. Take satire. Satire is an unresolved issue in the art world. If you create a satire of someone else's work, is it a copy or a new creation. If it is just a copy, then copy write applies. But if it is defined as satire, it is a new work, and can be publicly displayed immediately with no royalties paid. There are very grey lines in the art world as to what is copy and what is newly inspired creation.

Would that not deny the appreciation of her art and it's contribution to culture to an entire generation or more who would not be able to afford it?

It may. But some art work is very personal. There are paintings she has done that she will not let anyone other than me view. Art is a very personal peek into the artist's soul, so I maintain that there is a difference between patent and copy write.

Also, an artist has a copy write even if it is not registered, as long as they can prove that they were the original creator, so there is a whole new can of worms opened.

Why I find your article interesting "Oracle v. Google shows the folly of U.S. software patent law" I disagree with its premise assuming you are stating that software should not be abled to be patented.
I have couple quick questions for you?
1. whereas your premise is that software should not be patented, does that apply to blogging material generated from software?

2. Do you understand the human hours that goes into an operating system subsystem or any core component of complex software?

3. Then why not let software "bandits" re-sale the android operating system and MAC os X, and windows etc ...?

4.. What about the software that runs nuclear plants and heart monitors ? Perhaps by your premise these should all be open for free usuage without any compensation going to developers of these software components?

5. What about the software used in drug analysis systems ?


7. Perhaps the patent law does not go very well with GENE discovery

"Just a Thought"

Patent != copyright. In general, free software advocates are in favor of copyright, but not patents for software.

First and foremost, patents should not be lottery tickets. To patent something, and then be passive and not use the patent, and wait for someone else to use it so they can be sued -- that turns the concept of patents 180 degrees around from the intention of intellectual property. This happened to RIM; they built a successful company, then, after all the work had been done, they got sued. The purpose of patents is very specifically to encourage an inventor to bring an idea into production. Without patents, an inventor tends to keep things secret, which discourages production. With patents, an inventor must fully disclose everything, in return for which he gets an intellectual property right. The law exists not for the benefit of the inventor, but for the benefit of society. Society benefits because the item is in production, and because the methods are published and others can inovate and improve on what has been published. But if the thing doesn't go into production, or if the producer fails to keep it in production, then I wish the law would say that there can be no patent infringement. Trademark law has this -- "use it or lose it," but not so for patents. In my opinion, patent law should have a "use it or lose it" proviso.

This, of course, is in addition to the changes needed to adapt patent law to the world of software. Currently, software patents mostly serve a cause that is 180 degrees the reverse of the intention of why patent law exists. Currently, software patents are used to block innovation, rather than encourage it. The result is that society suffers, rather than benefits.

Many institutions in our society have evolved in unexpected ways to the detriment of the common good. Patent, trademark and copyright laws originally had beneficial objectives - to protect the manufacturer who spent a great deal of time & effort making a new product, to differentiate between otherwise identical products so the consumer would know whether a bar of soap was made by one company or another or to benefit the creator of a work enough to compensate for the effort expended to better society.

Likewise the origin of corporate entity was founded in the concept of cooperation to the betterment of all. The later separation into profit or non-profit became a dilution of the original concept - to benefit the public.

Now that the private interests have become overprotected, it is time to dampen the oscillation and bring the compass pointer back to the real course - serve the public good for the betterment of all.

Julie ...i just took what you wrote and posted it on my own blog. Since for software you assert that no patents are required, i assume that this will also hold true for copyrights on text written by anyone with a computer and a typist. So since its just meaningless data coming out of your fingers tips, signifying nothing, I'm sure you won't mind if I repost it as my own material elsewhere. Just as I'm sure Mr. Ellison will soon conclude that its perfectly acceptable to use software written by Sun Microsystems, make billions with it, and pay Oracle nothing.

While the article did talk confusingly about copyrights as well, the thrust was clearly against patents, not copyrights. They are not the same.

You are so wrong on so many level it is hard to grasp. The case is NOT about theft of the Java code, it revolves around whether APIs can be copyrighted. I.e. if the interface is protected or not. Google has NO Sun Java code, it is based upon the Apache Harmony code, running in an INCOMPATIBLE virtual machine.

If the APIs can be copyrighted then all clean room reverse engineering is in trouble, as I can claim an interface is protected, hence you cannot build to that specification.

If the case is clearly about patenting an API, this is insane. The whole purpose of an API is to allow for a "black box" interface to the outside world. Therefore it must be public to be useful. Duh!

You might as well patent TCP or IP (which fortunately cannot be done since they were U.S. Government sponsored creations for ARPA.) in terms of the global impact of such a thing.

Apis used to be the object of contracts, alliances, deals. The open Api is a new relatively phenomenon. On one level what is going on here is a battle between the old view and the new view. Java was on the fence on this one. A question: what did the Java licensees (Borland, IBM and in the day Oracle) get for buying licenses to Java for Sun? A trademark?

Your seeing more of this latley as foundation languages are used to develop multi billion dollar high layers. I guess then the foundation layer creaters and patent holders look for any reason to get the lawyers in. Facebook is facing litigation microsoft constantly was and is. To me just seems part of the game. The problem is the legal code is antiquated and messy. If the law was a programming language it would have gone the way of the DODO ...

A very simple way to get patents under control would be to restrict the PTO to issuing a finite number of patents - say 1,000/month.

Now it become possible to make a choice. Get into the fight and try to get one of those 1,000 patents which will be truly valuable. Or avoid the whole patent mess and just respect those 1,000 patents of which there will only be a few in each field.

It is impossible to try and respect the million or so software patents. I spent three days with a lawyer reading one and still couldn't figure out what they were trying to patent and I've been a programmer all my life. If the purpose of software patents is disclosure they are failing utterly - no programmer can understand them. The value of disclosure to the community is zero.

Another rule could be that an industry has to be 100 years old before patents are allowed in the field.

As I understand, Oracle's lawsuit is because Google modified Java's source code and did not submit the changes.

This is the principle of all open source projects. If someone improves or modifies the code, must submit the changes.

Android uses the Linux kernel. If Google modifies the source code of the Linux kernel, they must submit the changes. Otherwise, Linus Torvalds is entitled to sue Google the same way Oracle did.

I am not taking side with Oracle. In fact, I am taking side with the open source community.

That is very interesting. The fine article was VERY unclear about whether this was a patent or copyright issue. If google Java is a derived work, with no GPL source, then they are in the wrong. If they did a clean room implementation, then the issue is murkier. I have to ask, WHY would they do a clean room implementation on an open source product?

Looking forward to an update to this article after this week's decision.... :)

I live in Scotland (UK) and you may wonder why I am worried, since SoftwarePatents are not allowed in the European union.

Well I write software that is mostly distrubuted as opensource, and it is possible that some of this might infringe software that has been patented in USA. I am worried because if such software were to be made use of by someone in the USA, then I could posibly be extradited to the USA (the UK government has ratified a treaty with the USA that is very one-sided). I am 85 years old and I don't think that I could survive in a United States prison in Texas or Arizona for very long

Originally published on and republished with permission.