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Re: OT: How I learned to stop worrying and love software patents

Summary:  There is a real concern with the integrity of the patent
process underlying the Federal Circuit's refusal to condone summary
patent invalidation without an adequate scrutiny for triable questions
of fact.

On 7/26/05, Nathanael Nerode <neroden@twcny.rr.com> wrote:
> Hmm.  Sticking to patents for the time being, let's note that no court
> bothered to actually test whether the patent or copyright system falls
> within the Constitutional power to "promote the Progress of Science and
> the Useful Arts".  Given this, Diamond v. Chakrabarty is wrongly
> decided; it rules that the Congressional intent to allow "anything under
> the sun that is made by man" to be patentable subject matter is correct,
> and furthermore that it is the principle by which questions of
> patentable subject matter should be interpreted.  But that's a issue of
> major legal philosophy.

Both the majority and the dissent in Chakrabarty agreed that the only
question before the court was a narrow one of statutory
interpretation.  Even so, Chief Justice Burger addressed the
constitutional concern:

It is, of course, correct that Congress, not the courts, must define
the limits of patentability; but it is equally true that once Congress
has spoken it is "the province and duty of the judicial department to
say what the law is." Marbury v. Madison, 1 Cranch 137, 177 (1803).
Congress has performed its constitutional role in defining patentable
subject matter in 101; we perform ours in construing the language
Congress has employed. In so doing, our obligation is to take statutes
as we find them, guided, if ambiguity appears, by the legislative
history and statutory purpose. Here, we perceive no ambiguity. The
subject-matter provisions of the patent law have been cast in broad
terms to fulfill the constitutional and statutory goal of promoting
"the Progress of Science and the useful Arts" with all that means for
the social and economic benefits envisioned by Jefferson. Broad
general language is not necessarily ambiguous when congressional
objectives require broad terms.

One can reasonably argue whether Congress excluded bacteria from the
Plant Patent Act because they were satisfied with existing
administrative and judicial interpretations such as In re Arzberger
(the majority's guess), or because the only category of animate
"inventions" they intended to authorize was plants (the dissent's). 
But at least five generations of Supreme Court jurisprudence have
agreed that deciding what boundaries on patentable subject matter will
best "promote the progress of science and useful arts" is Congress's
job, and all the judiciary can do is try to construe the law correctly
based on the fact patterns presented.

It's interesting that you identify this as a question of legal
philosophy, though.  I would agree to some extent, noting the parallel
to non-obviousness as discussed in Justice Douglas's concurrence in
A&P Tea v. Supermarket (1950), and following it back to Justice
Bradley in Atlantic Works v. Brady (1882).  But the judicially created
(Hotchkiss v. Greenwood, 1851) doctrine of non-obviousness was
codified by Congress in 1952, and at the next opportunity (Graham v.
John Deere, 1966, about which more later) the Supreme Court adopted
Congress's "more practical test of patentability" in Section 103.

I would suggest that the Supreme Court's deference to Congress where
the scope of patentability is concerned, once the non-obviousness
requirement was duly codified, foreshadows the corresponding view of
copyright in Eldred v. Ashcroft.  I think it likely that none of the
Justices considered the Sonny Bono Act wise; but as the Eldred opinion
states in its concluding paragraph, "The wisdom of Congress' action
... is not within our province to second guess."

> Well, here's a nice simple one for you.
> Diamond v. Diehr was wrongly decided; it overturned Parker v. Flook for
> no particularly good reason, and didn't even have the decency to admit it.
> "Respondents' claims must be considered as a whole, it being
> inappropriate to dissect the claims into old and new elements and then
> to ignore the presence of the old elements in the analysis."

To my eyes, Footnote 12 of the Diehr opinion does a good job of
explaining why they didn't need to overrule Flook to arrive at this

It is argued that the procedure of dissecting a claim into old and new
elements is mandated by our decision in Flook which noted that a
mathematical algorithm must be assumed to be within the "prior art."
It is from this language that the petitioner premises his argument
that if everything other than the algorithm is determined to be old in
the art, then the claim cannot recite statutory subject matter. The
fallacy in this argument is that we did not hold in Flook that the
mathematical algorithm could not be considered at all when making the
101 determination. To accept the analysis proffered by the petitioner
would, if carried to its extreme, make all inventions unpatentable
because all inventions can be reduced to underlying principles of
nature which, once known, make their implementation obvious. The
analysis suggested by the petitioner would also undermine our earlier
decisions regarding the criteria to consider in determining the
eligibility of a process for patent protection. See, e. g., Gottschalk
v. Benson, supra; and Cochrane v. Deener, 94 U.S. 780  (1877).

In short, the mathematical algorithm, in the abstract, is still
treated as if it is within the "prior art"; but strictly as if it were
found in a textbook used in some field of pure science, with no
indication that it would be useful to apply it to the industrial
problem at hand.  This is consistent with the precedents cited as I
read them, and also happens to fit my intuitive sense of what divides
invention from scientific discovery.

> This might have been avoided had the following actually been true: "In
> this case, it may later be determined that the respondents' process is
> not deserving of patent protection because it fails to satisfy the
> statutory conditions of novelty under 102 or nonobviousness under 103";
> however, footnote 33 of the dissent makes clear that this was not the case.

The USPTO administrative procedure for applying the statutory tests
may well be mis-designed in such a way that the examiner could not
cope effectively with being told by the Court, "You mistook novelty
and non-obviousness issues with this application for subject matter
issues."  That doesn't mean that the patent couldn't be successfully
challenged in court later on Section 102 or 103 grounds.  It is not
the Supreme Court's job to distort its holdings on points of law to
make up for the parties' failure to hold the appropriate issues open
on remand.

> The patent consisted of combining a number of preexisting devices ---
> including the preexisting temperature sensors -- in a way which was not
> just obvious, but pretty much unavoidable -- everything in the industry
> points to it like a laser.  Given the description of the problem, *I*
> would have come up with it, and I don't know the first thing about the
> subject.

Maybe so; but unless you know a lot more about control systems theory
than I do, you would probably have botched the reduction to practice. 
Judging from the disclosure in #4,344,142 (the Diehr and Lutton patent
as issued), there are a lot of details involved in actually making the
recalculate-cure-time-on-the-fly idea work.  There's more to a patent
application than the claims; the part of 35 USC that I care strongly
about is Section 112.

> The rejection of the Flook method of claim analysis actually rejected
> precedents dating back to 1854, as noted by Stevens in the dissent.
> Stevens's dissenting opinion is spot-on.  As usual for his later work.

I think very highly of Justice Stevens as well; but I think I would
have held with the majority in Diehr.  I do not agree that Diehr
"reject[ed] the Flook method of claim analysis" (your language) or
"trivializes the holding in Flook" (Justice Stevens's).  On the
contrary, the two cases, taken together, distinguish quite clearly
between an attempt to patent a new mathematical formula under the
guise of industrial use (Flook) and the application of a new
combination of engineering techniques to get better industrial results
out of well-known science (Diehr).

> AT&T v. Excel was decided wrongly, of course.
> This court, unlike previous ones, didn't bother to look up the meaning
> of the terms "formula", "algorithm", or "equation", which can only be
> described as ignorance.  But that's a small matter.

Was the meaning of any of these terms in dispute?  What grounds do you
have for ascribing cluelessness in these matters to Judge Plager (on
the Federal Circuit since 1989, former dean of environmental law,
author of the In re Warmerdam opinion), Judge Clevenger (Circuit Judge
since 1990, and the sort of guy who chooses the
not-very-ignorant-seeming Kulpreet Rana as an elbow clerk), and Judge
Rader (also Circuit Judge since 1990, and co-author of West's Patent
Law casebook)?  It's fine to point out what you believe to be an
error; but do you have any idea how stupid it sounds to make sweeping
judgments of ignorance of patent law about the people who have been
interpreting it judicially for the past couple of decades?

> 'Thus, the Alappat inquiry simply requires an examination of the
> contested claims to see if the claimed subject matter as a whole is a
> disembodied mathematical concept representing nothing more than a "law
> of nature" or an "abstract idea," or if the mathematical concept has
> been reduced to some practical application rendering it "useful."'
> Yep, this is perfectly parallel to arguments allowing patentable
> artwork.  I invent a unique piece of artwork, but if I render it
> "useful", it's not a "law of nature" or an "abstract idea".

What claims, directed at statutory subject matter and not found in the
prior art, would you make in an attempt to patent that piece of
artwork?  Do you think there is no legislative or judicial guidance on
what constitutes a "useful" invention?  Do you care whether your paper
tiger has any claws?

> "In Alappat , we held that more than an abstract idea was claimed
> because the claimed invention as a whole was directed toward forming a
> specific machine that produced the useful, concrete, and tangible result
> of a smooth waveform display."
> Yep, my invention as a whole produces the useful, concrete, and tangible
> result of a pretty picture on a screen.
> This is the bottom of the slippery slope, as someone wrote in Spectrum.

Oh, now _there's_ a great citation.  Let me give you a better one,
from 35 USC 171:  "Whoever invents any new, original and ornamental
design for an article of manufacture may obtain a patent therefor,
subject to the conditions and requirements of this title."  If you
consider the concrete form of your artwork to be an "article of
manufacture" and want a 14-year monopoly on its use as an "ornamental
design", that's how you apply for it.  Good luck arguing that Congress
intended for your pretty picture to be recognized as "useful" rather
than "ornamental".

> Of course, the broad patentable subject matter wouldn't be nearly as
> serious a problem if the requirement of non-obviousness/non-triviality
> had any teeth.  But it doesn't.
> In Re Sang Su Lee, Teleflex v. KSR and the entire line of cases which
> demand specific suggestions in a particular written reference to
> determine obviousness are wrongly decided.  (And they aren't compelled
> by the Supreme Court precedents, either.)  I actually think this line of
> cases has done much more serious damage to the patent system than
> anything else -- it's the primary reason for the substantial drop in
> patent quality.  Patent examiners know that if they reject a patent for
> obviousness without demonstrating exactly why it's obvious with
> voluminous written references, they will be overturned.  It's very hard
> to prove something "obvious" now, and very very easy to get it declared
> non-obvious.

In re Sang Su Lee is, to my eyes, a straightforward and obviously
correct ruling.  As usual, the court did not compel the issuance of
the patent; it simply agreed with the petitioner that the examiner and
the Board of Patent Appeals had failed to follow the prescribed
procedure for placing adequate evidence in the record in support of
their decisions.  The opinion points out that "omission of a relevant
factor required by precedent is both legal error and arbitrary agency
action," and remands for "further proceedings appropriate to the
administrative process".  That patent ("Self-Diagnosis and
Sequential-Display Method of Every Function" -- total silliness)
doesn't appear to have issued; presumably the examiner turned in his
homework and justice was done.  What can there possibly be to disagree
with about this?

This brings us to Teleflex v. KSR, currently at the petition for writ
of certiorari stage.  (For those reading along at home, the Federal
Circuit's decision in this case is "unreported", meaning that it's not
available for citation as binding precedent in future cases; it is
attached as Appendix A to the cert. petition at
.)  Let's consider it in the same breath as Group One v. Hallmark
Cards, cited in the Cisco, Microsoft, et al. amici brief (
http://patentlaw.typepad.com/KSR%20MicrosoftCisco_Amicus.pdf ) as
another possible candidate for certiorari on similar issues.  What was
the Federal Circuit's sin in Group One?  They denied the district
judge authority to overrule the jury's finding of fact with regard to
the obviousness of Group One's claimed invention.

What is at stake here is how unambiguous the evidence of obviousness
has to be in order for a judge to take the decision away from the jury
(the ultimate trier of fact) and render judgment as a matter of law. 
(A district judge can also act as a finder of fact during the
request-for-summary-judgment stage, as in KSR, but must state
explicitly where he is doing so, and risks being overturned if
"genuine issues of material fact" remain that could possibly lead a
reasonable jury to a different conclusion.)  Seen in this light, we
find the connection to Sang Su Lee -- denial of an application by the
patent examiner equally forecloses the possibility of a jury trial on
the facts surrounding the legal question of patent validity.

Amici would have you believe that Supreme Court precedents (Graham v.
John Deere and Sakraida v. Ag Pro) stand for the proposition that not
only the question of patent validity but also the individual tests in
35 USC 101, 102, 103, and 112 are matters of law, to be decided by
judges and applied aggressively by patent examiners at the risk of
subjectivity.  Not so -- Graham's prescription of three essentially
factual inquiries remains the definitive interpretation of 35 USC 103:
 "the scope and content of the prior art are to be determined;
differences between the prior art and the claims at issue are to be
ascertained; and the level of ordinary skill in the pertinent art
resolved".  Sakraida articulated no new law beyond Graham, issuing a
very narrow holding reinstating the district court's judgment, based
on facts presented at trial and improperly reversed by the Fifth
Circuit, that "to those skilled in the art, the use of the old
elements in combination was not an invention by the obvious-nonobvious

Note that Graham cites A&P Tea v. Supermarket for the statement that
"the question of validity of a patent is a question of law".  That
statement, drawn from a concurrence by Justices Douglas and Black, is
properly read to address the standard by which an appellate court may
review a lower court's determination of patent validity.  This
determination is indeed a matter of law, and "no 'finding of fact' can
be a substitute for it in any case" -- but it is a question which
depends on findings of fact, and a district court ought not to proceed
to judgment as a matter of law without explicitly articulating those

So why is it urged that Teleflex v. KSR should be overturned?  Here is
a particularly telling paragraph from the amici brief:

Microsoft has been sued for allegedly infringing dozens of
questionable patents in the software field. The lack of access
to software prior art, the inability to find the prior art that
does exist, and the limited resources of the Patent Office,
make searching by the Patent Office particularly ineffective.
Given the difficulty inherent in finding software prior art,
proving a software patent invalid by clear and convincing
evidence, especially if a motivation to combine element is
also required, is exceedingly difficult.

The "difficulty inherent in finding software prior art"?  Hello, McFly
-- ever tried Google?  There is no need to file "defensive patents" if
you are trying to establish factual grounds to meet the Federal
Circuit's "motivation test" in support of a future JMOL.  Just publish
about what you're doing, and suggest any combinations that seem like
rewarding directions for future research!  That isn't even a barrier
to patenting those combinations yourself in the future if it turns out
that reducing them to practice is non-trivial.

The patent examiner's research may focus on the patent office's
records rather than the literature as a whole, but the entire public
record is available for inclusion in reexamination requests, briefs
urging summary judgment during litigation, and opinions obtained when
satisfying a duty of due care.  It's nice of Cisco and Microsoft to
worry about the USPTO's budget challenges, but if they are the target
of lawsuits involving patents whose validity cannot be established
without referring triable questions of fact to a jury, they have no
one to blame but themselves.

> Your choice whether this is incompetence or corruption, but it's
> definitely one or the other.

Not in my book, it's not -- I'm squarely in the Federal Circuit's camp
on this one.  Patent examiners need to do a better job on their
homework, they may well need bigger budgets with which to do so (or at
least a quick course in the efficent use of Google), and they need the
help of major industry players to flesh out the public record in
support of patent denial on Section 102 and 103 grounds.  To ignore
these needs, and to encourage patent examiners and district judges to
take triable questions of fact into their own hands, would be both an
error as a matter of law and a terrible blow to the public benefits
that the patent system is supposed to secure.

> The number of patents overturned on obviousness grounds has dropped from
> the historical 30-40% to nearly nothing -- and it's not because fewer
> are being filed.  :-P

Where, exactly, do you get those numbers -- and what do you mean by
"overturned"?  The quickest of searches tells me that "the most common
basis for denial of a patent application is the USPTO's determination
that an invention is obvious" (
http://www.crowleylaw.com/IPNews/IP004.htm ).  The 2003 numbers
collected by PatStats ( http://www.patstats.org/2003.html ) suggest
that Section 103 obviousness grounds are the most commonly raised
issue of validity in patent litigation, with about a 50-50 split
between conclusions favorable to patentee and alleged infringer.

- Michael

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