In Defense of Software Patents – Part 2 – With Commentary On Why Martin Goetz Is Wrong

It was with some amusement that I read Martin Goetz’s ‘In Defense of Software Patents – Part 2‘. I was even more amused when the post was apparently pulled from Patently O. Curiously there’s no statement as to why it was pulled. It just disappeared. Unfortunately for them, I kept a copy.

I don’t agree with Martin Goetz. In fact, as most people know, I don’t agree with anyone. Martin Goetz however in this post demonstrates the lack of education that I’ve found all to often in arguments on the subject of patents. Specifically his lack of historical knowledge has affected his reasoning.

How has it affected his reasoning? Simple. He is unaware of the background behind law in the United States. Let’s take a look at his article. I’ll fill in the historical background at the end.

Guest Post: In Defense of Software Patents – Part 2

Guest Post by Martin Goetz

Back on November 30, 2009, PatentlyO published my article “In Defense of Software Patents” in response to the editorial “Abandoning Software Patents” by Ciaran O’Riordan, Director of End Software Patents (posted on PatentlyO on November 6, 2009) which had as its premise that software companies are trying to protect “software ideas”.

In this article I comment on the Bilski Opinion as well as give some concrete examples of software-only patents as well as hardware/software patents. Also, my previous article received hundreds of comments, many being negative, and part of this new post is in response to those negative comments.

Since the June 28th Supreme Court Bilski decision there have been many articles on what the Opinion stated and inferred about the patentability of software.

The first paragraph is probably the most accurate one. Yes, there’s been a lot of ink burned discussing Bilski, and there will continue to be a lot of ink burned. Even among patent attorneys there appears to be many views on what it means, not only in regards to patenting of software, but patenting of hardware as well.

The Opinion restated what previous Supreme Courts concluded: that laws of nature, physical phenomena, mathematics, mathematical formulas (by themselves), algorithms (by themselves), and abstract ideas (which would include software ideas) are not eligible for patent protection.

While the Bilski Opinion never directly questioned the patentability of software, the Justices wrote extensively about the meaning of Section 101, the meaning of the term “process” and why the test for patent eligibility should not exclusively be “the machine-or –transformation test”. Justice Kennedy, with the concurrence of all other Supreme Court members, wrote that the Information Age puts innovation in the hands of more people and raises new difficulties for the patent law (and the Patent Office) to determine who should or should not receive patent protection.

This is where in my opinion he starts to loose it. The ‘machine or transformation test’ did definitely put some limits on patentability. And the Supreme Court recognizes that there have to be limits. He appears to think that by stating that the ‘machine or transformation test’ is not the only method of determining whether or not something can be patented, that the court in effect is leaving the field wide open. This is not true. The court in it’s questions appeared to be quite troubled by the extending of the bounds of patent law to cover wider and wider ranges of subject matter, and wished to set some limits on what could or could not be patented. At the same time the court didn’t want to tie the Patent Office’s hands with a ruling that couldn’t be justified.

Having the ‘machine or transformation test’ as the sole means of deciding of a patent could be issued must have struck the court as too limiting, which is why the court said it shouldn’t be the only test, but the court appears to have left the decision as to what other tests should be used to the Patent Office.

My November 2009 PatentlyO article “In Defense of Software Patents” produced hundreds of comments. Many wrote that they were against the patenting of software because software was an “algorithm” or “mathematics”. In that article my primary argument was that a computer software invention is as patentable as a computer hardware invention and the only difference is the mode of implementation. My thesis was that Software Product companies in the Software Industry are looking to patent a machine process and not a computer program, which is protected by the copyright law. I showed why software product companies can be viewed as high technology manufacturing entities and should be just as eligible for patent protection as computer hardware companies.

In this article I give examples of patents where the preferred implementation of an inventive machine process is in software (via a computer program), hardware (via circuitry), or a combination of both software and hardware.

Here he seems very confused. Software, be definition, is intangible (though it may be fixed on tangible media). Hardware by definition is tangible. Let’s take Microsoft for example. He describes them as a high technology manufacturing company. Manufacturing is defined in Wikipedia as the use of machines, tools and labor to make things for use or sale. Microsoft’s manufacturing cannot be considered high technology, since they simply use Compact Disc and Digital Video Disc pressing equipment that they have purchased. This is true of all software companies. The software that they make may be high technology, the method of making distribution media isn’t.

There is little argument that “processes” and “machine processes” are patentable subject matter The question has always been about the nature of software and what one is trying to patent. For over 40 years I have been involved in that argument since I received the first software patent in 1968 for an innovative way to sort large amounts data on a computer that had tape drives that could only read and write data in a forward direction (See Patent # 3,380,029, Sorting System, Issued April 23, 1968).

Actually there is a fair amount of argument about whether processes of machine processes should be able to be patented. Since he apparently hasn’t heard of the arguments, it appears that he has been sleeping.

The Sorting System patent was dubbed a software patent but it could also have been a computer hardware patent. It was dubbed a software patent solely because the preferred implementation (the disclosure) was a logic chart (which is recognized by the patent office as a proper disclosure). My Sorting System patent would not have been controversial if the disclosure had been hardware circuitry since there were many hardware patents for sorting data on special-purpose computers and special apparatus. In my patent application I referenced six of those patents which all had unique hardware circuitry in their patent disclosure. Three of them are available online, courtesy of Google Patent Search.

Yes, you can often implement something in more than one way. A good example is the comparison hardware level and software level DVD playback. But there’s other considerations. Anything that is implemented in software, can by definition be done mentally. I know a lot of people will argue with me on this point, however it is true. If you can’t do the function mentally, you can’t write the software.

As to his assertion that his Sorting System wouldn’t have been controversial if it had been a hardware implementation, I’d like to refer him to KSR v. Teleflex, where the hardware implementation was considered controversial, and the court ruled against it’s patentability.

From 1968 through 1980 my previous company, Applied Data Research filed Amicus briefs in the Prater & Wei, Benson, Johnson, Flook, and Diehr cases in which we argued that a machine process patentable in hardware is equally patentable in software. Here is exactly how we posed a “Question of Law” “in our 1980 Diehr brief

Whether a computerized machine or industrial process that is patentable subject matter under 35 USC 101 when constructed with a hardware program (wired circuits) would also be patentable subject matter when constructed with a stored computer program (i.e., firmware or software)?

The USPTO is currently in agreement with that “Question of Law” when in 1996 it published its Examination Guidelines for Computer-Related Inventions (Final Version). The Guidelines stated in its Introduction the following: “The Guidelines alter the procedure office personnel will follow when examining applications drawn to computer-related inventions and are equally applicable to claimed inventions implemented in hardware or software.”

Now he’s making a circular argument. An invention is patentable, if U.S. Patent and Trademark Office decides it is patentable. This is manifestly not true, again see KSR v. Teleflex where an invention that the USPTO decided was patentable was later ruled unpatentable by the United States Supreme Court.

In that 1980 Diehr brief we also posed the following argument to the Supreme Court:

An inventor demonstrates his new invention to his patent attorney with great pride; he has developed a cabinet for     reading books out loud to the blind. The cabinet contains both a reading and talking computer. After the demonstration, the patent attorney responds:

What’s inside the cabinet? Did you build it with software or hardware (a stored program or hardware circuitry)? If built with     a hardware program, your machine would be patentable. But if you built it with a stored program, the Patent Office would say it     was merely mathematics and, therefore, unpatentable.

The example above of a hypothetical “cabinet for the blind” invention was back in 1980 in our Diehr Amicus brief.

Twenty years later, in 2000, a renowned inventor, Ray Kurzweil received a patent named Reading System which Reads Aloud From An Image Representation Of A Document. The patent disclosure shows a diagram of a monitor, scanner, speakers, and a PC computer composed of a processor, storage and a keyboard. The essence of the disclosure and the invention is a logic chart describing a machine system which interacts with a speech synchronizer and the various devices.

The first sentence of the abstract in the patent stated “a reading system includes a computer and a mass storage device including software comprising instructions for causing a computer to accept an image file generated from optically scanning an image of a document.”

At that time, Ray Kurzweil’s company, Kurzweil Educational Systems marketed a special purpose hardware/software system called the Kurzweil 3000 Reading Machine which was marketed to the blind and poor readers. Their 2000 year patent protected this product from imitators. Today the company sells a software only system called Kurzweil 3000 and continues to have the protection of the patent system thru his original 2000 patent and with additional patents e.g., Reducing processing latency in optical character recognition for portable reading machine (which is a software-only patent).

Few would argue that the Kurzweil 3000 Reading Machine was not an invention and not deserving of a patent.

Actually a lot of people would argue this for several reasons.

1) Prior Art. I know of a description of a similar system dated to 1965.

2) Obviousness. The invention is an amalgamation of existing parts, that would be obvious to someone skilled in the field. Apple and Microsoft both produced technology that did most of this as early as 1990. All that Kurzweil did was take off the shelf components, cobble them together, and write some software, which did what existing software already could do.

This is one of the reasons I am so skeptical of the Patent system. All too often I see patents being issued for ‘inventions’ that do not appear to have required any inventiveness. Rather than being a source of innovation, the patent office more often seems to act as a method to exclude competition from a market, by making the cost of entry too high (prosecuting or defending a patent suit costs millions of dollars).

This is not to say that people don’t invent things. They do. But there are people who are gaming the system, and the way the system is set up, even if someone has been proved to be gaming the system, there is no punishment. Because there is no punishment, there is no incentive to act in an ethical manner, in fact acting in an ethical manner can be dangerous when your competition isn’t acting ethically.

While I am a strong advocate for software-related patents I have always been opposed to the patenting of Business Method Patents (BMPs). In my 2006 article Patents: Where’s the Invention? I stated that the Patent Office should do what the European Patent Convention did when it ruled that anything that consists of “schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers” is not an invention and therefore not patentable.” Justice Stevens, in his Opinion also wanted to ban BMP’s from being patentable subject matter when he concluded that a method of doing business is not a “process” under 101.

Although the Bilski Opinion disallowed the Bilski application they stated that under certain conditions business methods could still be patentable subject matter. On July 27th the USPTO set up more stringent rules for the issuance of BMPs in their Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos. In many ways those guidelines are similar to the way computer software and hardware patents are currently being treated under the 1996 Guidelines for Computer-Related Inventions.

You will note that he doesn’t define the difference between software patents and business method patents. In many cases the two overlap. This makes his opposition to business method patents somewhat self serving in my opinion. He appears to be trying to say that his software patent deserves protection because it isn’t a business method patent.

Part of the problem is he is arguing that anything that consists of schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers shouldn’t be patentable, however a sorting algorithm is a mental act, which would make his ‘invention’ not patentable.

One of the greatest challenges facing the Patent office today for BMPs, software or hardware patent applications is in discovering prior art and determining if there is an invention. The USPTO “Peer to Patent” pilot project” which allows the public (including professionals in their respective fields) to comment on patent applications is still in its infancy, but offers the potential to assist the Patent Office in rejecting the large number of applications that are filed each year. The stated goal of the pilot project was to “connect the USPTO to an open network of experts online.” Also, private companies e.g., the Article One Partners, a patent research firm, have the potential to significantly reduce the large number of patent litigation cases.

I am in partial agreement with what he has said. Prior Art is a huge issue. For example several attempts have been made to patent natural plants. The problem is less of discovering the prior art, than it is adding rules to the Patent System which punish misbehavior.

The other issue is that the USPTO seems to believe that it exists to help inventors to get patents, and to err on the side of the inventor if there is any question. It is abdicating it’s responsibility to act as a gate keeper, to ensure that the patents which are issued deserve to be issued. The USPTO is supposed to serve the public, and by not screening patents more rigorously it is not doing so.

In conclusion, while I am a strong proponent of software patents I am very aware, and agree with, many of the arguments against patents because of patent trolls, frivolous patents, e.g. Amazon’s one-click patent, and frivolous patent litigation that can put companies out of business. And I support changes in the Patent Law to reduce those problems. But if one believes in the how the Patent System has fostered innovation and helped the US grow and prosper, then there is no rational reason to eliminate technology inventions that use software as its implementation.

In my previous article there were many comments from diehards that continued to believe that software companies are trying to patent a computer program. Whether those diehards still believe that a computer program is mathematics, or a mathematical formula, or an algorithm, or an abstract idea, so be it. Computer software programs are not what software companies are trying to patent. A software patent invention is on a unique machine process —- nothing more and nothing less. And the criteria should be 1. Innovation 2. A proper disclosure and 3. Usefulness — the same requirement that is the criteria for all patentable subject matter.

What he’s saying is, See? I’m a nice guy. I oppose the Amazon one-click patent. Yeah, right.

Like most Americans, Martin is rather uneducated. Seriously. Americans really don’t know the history of their country. Oh, they can often rattle off the names and dates of battles, but they miss more important things.

Why did the Thirteen Colonies rebel against the British Empire? Most people will say that freedom is involved, but when you push, you quickly find out that they don’t know how.

The Thirteen Colonies rebelled against the English for economic reasons. The Empire was set up as a supplier of raw materials for English factories. Raw materials were shipped to England, and manufactured goods were shipped back. To keep this profitable setup in operation, it was necessary to pass legislation limiting the ability of the colonies to set up their own manufacturing plants.

A group of rich inhabitants of part of North America, including the very wealthy George Washington, didn’t like this. They wanted to set up their own factories in North America, so they could grab a slice of the huge market themselves. Factories in North America would have dramatically lower shipping costs than factories in England, which would be a huge advantage. The English merchants of course were opposed to this, as it would cost them money.

It ended up costing them money anyway, when the Colonies actually managed a successful rebellion against the Crown. Did you ever notice how many of the Founding Fathers were be-wigged aristocrats? Now you know why. The Founding Fathers were in it for the money, honey.

Their experiences with the British Empire model also made the Founding Fathers extremely skeptical of intellectual property protection. They had, after all, been on the short end of the stick, as one of the weapons that the British used against the colonies was patent law. Thomas Jefferson was particularly skeptical as this page at shows, though his attitudes changed later, possibly because he was able to make money from the patent system.

For another example of how the British Empire used the colonies as suppliers of raw materials, consider India. Before the British takeover of India, there were a lot of manufacturing operations. After the British took over, they closed most of them, and forced India to buy manufactured goods from England.

In closing, either Martin Goetz doesn’t know what he’s talking about, or he’s lying. I can’t see any other options.


Wayne Borean

Tuesday September 14, 2010

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  1. The article by Martin Goetz is now back up on Patently O, giving me the curious problem of explaining how I wrote a rebuttal before the article was officially published. Ah, the joys of the internet. It appears that Martin hit the wrong button, and rather than saving it, he published it.

    I’ve reviewed the article again, and confirmed that the only difference is that the final article has footnotes. The grammar errors are still there.

    My apologies for not updating this earlier, I’ve had a busy week.

    Wednesday September 15, 2010

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