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Re: libdts patent issue?

Summary:  I can still find no substantive difference between US and
EPO law on software patentability.

On 7/20/05, Arnoud Engelfriet <galactus@stack.nl> wrote:
[snip good stuff]
> For contributory infringement you need additional evidence.
> Contributory infringement is knowingly selling or supplying an item
> for which the only use is in connection with a patented invention.
> If you had a good faith belief the item had non-infringing uses,
> then you're not contributing to infringement.
> Also the penalties tend to be different. So I do think there is
> a difference.

Fair enough.  AIUI the standard here is that it must actually have
substantial non-infringing uses and the vendor must be making a good
faith effort to sell it for its non-infringing uses rather than using
them as cover for a larger, infringing economic opportunity.  When I
get around to finding precedents from the Federal Circuit that clarify
this question, and evaluate the associated penalties, I'll let you
know.  :-)

[snip more good stuff]
> The law says so: articles 52(2) and (3) EPC.
> http://www.european-patent-office.org/legal/epc/e/ar52.html

Understood that that's the statutory basis for the subject matter test
(parallel to 35 USC 101), insofar as the EPC constitutes statute
rather than treaty.

> The EPO's Board of Appeals has issued several decisions that
> discuss this article:
> http://legal.european-patent-office.org/dg3/pdf/t971173ex1.pdf
> (see page 12 of the PDF, sections 4 & 5)

I've made a quick pass through this opinion (In re IBM) and find it
unsurprising.  Methinks the EPO's law clerks need to take some lessons
in concise and vivacious writing from some of ours.  I also observe
that the case law established by previous Boards of Appeal is very
much the primary source of citations, and if your courts aren't bound
by stare decisis except in the same sort of extraordinary
circumstances that ours are, I can't tell the difference.  See
Sections 7 and 11 of this ruling, and particularly this sentence from

This means that the question to be decided upon in the present appeal
has not been answered earlier by the boards of appeal.  Strictly
speaking, the cited reasonings may therefore be considered to
constitute obiter dicta and not ratio decidendi.

As for the content of the ruling, it discusses the "physical" effect
silliness quite a bit (and rather inconclusively), then tells the
lower court to go back and consider the disputed claims on their
merits, evaluating them for non-trivial "technical effect", rather
than assume that they describe software "as such".  Here is Section
12.2, the heart of the ruling:

The present appeal relates to whether the subject matter of claims 20
and 21 is excluded from patentability under Article 52(2) and (3) EPC.
 The examining division decided that it was.  The Board wishes to
emphasize that it has decided only that a computer program product is
not excluded from patentability under all circumstances.  To the
Board, those circumstances include the exact wording of the claims at
issue.  As the wording of
present claims 20 and 21 shows, there are various ways in which a
claim to a computer program product may be formulated.

>From the fact that these claims were refused by the examining division
on the basis of the cited passage in the Guidelines, the Board
concludes that the examining division did not consider the exact
wording of those claims in detail, and acknowledges that, from the
examining division's point of view, there was little need to do so. 
However, now that the Board has decided that not all computer program
products are prima facie to be excluded from patentability, a thorough
examination of the exact wording of the claims has to be carried out.

In order to preserve the appellant's right [not? -- MKE] to have this
determined at two instances, the case is remitted to the first
instance for further examination of this point.

Apart from the substantial difference in writing style, it seems to me
to be rather more similar to the opinions in Diehr, Alappat, and AT&T
v. Excel than it is different.  I have already spoken to AT&T v.
Excel; the unanimity of this opinion, together with the denial of
certioriari in State Street, suggests that this is now quite settled
law in the US.  Note that Alappat (1994) was decided en banc, with the
"majority" opinion written by the same judge who wrote State Street. 
Alappat has one of the more complex opinion structures that I have

Rich, J., with whom: as to Part I (Jurisdiction): Newman, Lourie, and
Rader, JJ., join; Archer, C.J., Nies, and Plager, JJ., concur in
conclusion; and Mayer, Michel, Clevenger, and Schall, JJ., dissent;
and as to Part II (Merits): Newman, Lourie, Michel, Plager, and Rader,
JJ., join; Archer, C.J., and Nies, J., dissent; and Mayer, Clevenger,
and Schall, JJ., take no position.

This alone tends to be enough to trigger a lot of loose talk about the
conformability of the decision with pre-existing law, just as did the
5-4 split in Diamond v. Diehr.  For a more qualified commentator's
take on how AT&T v. Excel settled the matter, read
; for purposes of comparison to In re IBM, I will focus on Diehr

The dissent in Diehr presents a cogent history of the pre-1981
tug-of-war over software patentability in the Supreme Court and the
Court of Customs and Patent Appeals (the predecessor to the Federal
Circuit).  It then proceeds to critique the majority opinion,
essentially on stare decisis grounds.  My own opinion (as if anyone
cared) is that the dissent would have been correct if it had the
factual posture straight -- but it didn't.  Footnote 15 to the
majority opinion says it all:

The dissent's analysis rises and falls on its characterization of
respondents' claims as presenting nothing more than "an improved
method of calculating the time that the mold should remain closed
during the curing process." Post, at 206-207. The dissent states that
respondents claim only to have developed "a new method of programming
a digital computer in order to calculate - promptly and repeatedly -
the correct curing time in a familiar process." Post, at 213.
Respondents' claims, however, are not limited to the isolated step of
"programming a digital computer." Rather, respondents' claims describe
a process of curing rubber beginning with the loading of the mold and
ending with the opening of the press and the production of a synthetic
rubber product that has been perfectly cured - a result heretofore
unknown in the art. See n. 5, supra. The fact that one or more of the
steps in respondents' process may not, in isolation, be novel or
independently eligible for patent protection is irrelevant to the
question of whether the claims as a whole recite subject matter
eligible for patent protection under 101. As we explained when
discussing machine patents in Deepsouth Packing Co. v. Laitram Corp.,
406 U.S. 518  (1972):

      "The patents were warranted not by the novelty of their elements
but by the novelty of the combination they represented. Invention was
recognized because Laitram's assignors combined ordinary elements in
an extraordinary way - a novel union of old means was designed to
achieve new ends. Thus, for both inventions `the whole in some way
exceed[ed] the sum of its parts.' Great A. & P. Tea Co. v. Supermarket
Equipment Corp., 340 U.S. 147, 152 (1950)." Id., at 521-522 (footnote

In order for the dissent to reach its conclusion it is necessary for
it to read out of respondents' patent application all the steps in the
claimed process which it determined were not novel or "inventive."
That is not the purpose of the 101 inquiry and conflicts with the
proposition recited above that a claimed invention may be entitled to
patent protection even though some or all of its elements are not

And in fact, the scope of the Diamond v. Diehr opinion is limited to
the Section 101 consideration (whether the invention is statutory
subject matter), and explicitly authorized the lower court to reject
the patent on Section 102 (novelty) or 103 (non-obviousness) grounds
if the facts warranted.  Compare Section 8 of In re IBM:

The Board takes this opportunity to point out that, for the purpose of
determining the extent of the exclusion under Article 52(2) and (3)
EPC, the said "further" technical effect may, in its opinion, be known
in the prior art.

Determining the technical contribution an invention achieves with
respect to the prior art is therefore more appropriate for the purpose
of examining novelty and inventive step than for deciding on possible
exclusion under Article 52(2) and (3).

> http://legal.european-patent-office.org/dg3/pdf/t950931eu1.pdf
> (see page 12, similar reasoning for a business method)
> The Germans issued a somewhat similar decision in 2000:
> http://swpat.ffii.org/papers/bgh-sprach00/index.en.html

I'll try to get to these sometime but it doesn't feel urgent.  :-)

- Michael

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