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Difference between revisions of "Software does not make a computer a new machine"

(rm "Argument" section - it gives the car analogy, which is already lower down)
(→‎US case law: Those who argue that software can make a new machine sometimes use the "as a whole" phrase from the Diamond v. Diehr ruling by US Supreme Court on 3 March 1981. Ben Klemens refutes this in his book Math You Can't Use and in)
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The "new machine" argument is an attempt by patent lawyers to fool examiners and judges by presenting a non-novel component (the computer) together with a non-patentable component (the software) and get a patent on the combination, even though neither component is actually patentable and the act of putting the software on a computer is trivial and expected.
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One method used to circumvent the limits of software patentability, is to claim not "software" but "software and a computer".  The goal is to present one non-innovative object (the computer) and one non-patentable object (the software) and get a patent on the combination.  The argument made is that, when the software is put on the computer, the computer becomes a '''"new machine"'''.
 
  
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One example of this logic being rejected by the US [[CAFC]] (appeals court), is the [[in re Alappat]] decision, which said:
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The patent applications usually mention a computer or a "storage medium".  When defending such patents in court, patent lawyers sometimes describe the idea as creating a "new machine" because the computer appears to have gained a new ability, when in reality the computer could always perform these tasks.  So, instead of claiming this:
  
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<blockquote>
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* a process which does ''X'', using a computer
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As the player piano playing new music is not the stuff of patent law, neither is the mathematics that is Alappat’s “rasterizer.”
 
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</blockquote>
 
  
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==Brief analogies==
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The patent lawyer writes this:
  
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=== Calculator ===
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* a computer which can do ''X''
  
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A basic calculator does not become a new calculator when you punch in a new calculation for it to perform.
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This is sometimes called a '''Beauregard claim''' in the [[USA|US]].
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==US case law==
  
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=== Car ===
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Those who argue that software can make a new machine sometimes use the "as a whole" phrase from the [[Diamond v. Diehr ruling by US Supreme Court on 3 March 1981]].  [[Ben Klemens]] refutes this argument in his book [[Math You Can't Use]] and in the amicus brief he wrote for the CAFC case [[in re Bilski]].
  
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If we have patented an automobile which can drive anywhere, we cannot then come back and file patents for driving from Albequerque to San Diego, etc.  -- the more general patent already applies.
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===In re Alappat (1994)===
  
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=== Human ===
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A patent of this type was upheld by the [[US CAFC]] in 1994 in the [[In re Alappat]] case.  The patent was on using anti-aliasing to improve image display, and the court agreed that "''a general purpose computer in effect becomes a special purpose computer''".
  
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A human performing a set of steps does not become a different human when he or she changes to perform a new set of steps. The human is simply following a new configuration in his or her head.
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===In re Beauregard (1995)===
  
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Similarly, a computer system running different software is still the same (already patented) computer system.
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''[[In re Beauregard]], 53 F.3d 1583 ([[US Court of Appeals for the Federal Circuit|Fed. Cir.]] 1995)''.
  
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=== Fingers v. fork ===
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====Example "Beauregard claim"====
  
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A human using his/her fingers to scoop up food does not become a fork. Similar effects can be achieved through completely different "machines".
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One example given by ''[[Patently-O]]'' is claim #2 of this patent application:<ref>http://www.patentlyo.com/patent/2011/08/if-the-software-method-is-not-patentable-then-neither-is-the-computer-readable-medium.html</ref>
  
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Similarly, using an existing computer system to simulate some invention does not mean that computing system becomes the new invention (if in fact the patent actually describes a new invention).
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<blockquote>
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2. A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:<br />
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<br />
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a) obtaining credit card information relating to the transactions from the consumer; and<br />
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<br />
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b) verifying the credit card information based upon values of plurality of parameters, in combination with information that identifies the consumer, and that may provide an indication whether the credit card transaction is fraudulent, wherein each value among the plurality of parameters is weighted in the verifying step according to an importance, as determined by the merchant, of that value to the credit card transaction, so as to provide the merchant with a quantifiable indication of whether the credit card transaction is fraudulent,<br />
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<br />
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wherein execution of the program instructions by one or more processors of a computer system causes that one or more processors to carry out the further steps of;<br />
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<br />
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[a] obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;<br />
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<br />
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[b] constructing a map of credit card numbers based upon the other transactions; and<br />
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<br />
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[c] utilizing the map of credit card numbers to determine if the credit card transaction is valid.<br />
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<br />
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3. A method for verifying the validity of a credit card transaction over the Internet comprising the steps of:<br />
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<br />
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a) obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;<br />
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<br />
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b) constructing a map of credit card numbers based upon the other transactions and;<br />
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<br />
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c) utilizing the map of credit card numbers to determine if the credit card transaction is valid.
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</blockquote>
  
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==Long analogies==
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==UK case law==
  
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=== House ===
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From the [[Symbian ruling by UK Court of Appeal on 8 October 2008]] declared that yes, software can turn an old computer into a new machine:
  
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A full working computer can be made from a house with a great many doors and door sensors, a central clock, lots of wires, and a motor per door to open and close that door. This house is the computer, made and patented once. From that point forward, every single case of this house "becoming" a new machine is absolutely nothing but a reconfiguring of its doors into the open or closed position. That's it. We aren't creating a new machine. We are simply opening and closing the doors to match the new program this house will run to effect a new set of logical steps needed to effect a new computation (ie, to simulate a particular analog machine that might be built just for the occasion).
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<blockquote>
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56. Putting it another way, a computer with this program operates better than a similar prior art computer. To say "oh but that is only because it is a better program – the computer itself is unchanged" gives no credit to the practical reality of what is achieved by the program. As a matter of such reality there is more than just a "better program", there is a faster and more reliable computer.
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Does it make sense that by changing which doors are open and which are closed (and doing nothing else), that we are creating a new machine? Maybe it takes creativity, luck, analysis, etc, to find a good set of doors to open and close (for example, mathematicians and physicists try to solve new problems by coming up with such a configuration), but we are most certainly not creating a new machine. We are reconfiguring the state of the machine, reconfiguring its doors to be either opened or closed. And, further, the machine, in any of its states, does nothing but process information in a way any human could by knowing the initial state of the doors. Since this is just information processing (digital in nature) coupled with ordinary conversion to (from) analog form through standard peripheral devices (see below), we do not need a slow human or a bulky house for the digital processing, but can instead use a modern digital calculator (the "computer") which uses very tiny parts that use up very little energy and have very little mass so can move very fast.
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</blockquote>
  
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This modern computer already exists and can be bought very inexpensively in many stores around the US. It's just a glorified pocket calculator. That same modern computer can run essentially an infinite number of distinct algorithms. We just have to set the initial configuration of "open or closed doors" appropriately and the computer will do the rest automatically. We are not creating a new machine. We are configuring an existing machine's "doors" to the *exact* same opened or closed position as we would if we were dealing with a computing house.
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==Analogies==
  
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To see the results and interact with the gigantic computing house more easily we take a standard display monitor, keyboard, mouse, etc, and attach it to the doors that are responsible for holding the values inputted into and outputted from these peripheral devices. We would use ordinary peripheral devices for this in the expected way and for the designed purpose. These all might have been patented. What goes in and out of them is just data in the proper understood format, eg, to be directly displayed on the screen as colors. Every image can be trivially digitized to be seen or vice-versa to be marked as door open/close configuration. At the time we built (and perhaps patent this computing house), we also create the adaptors that change the electrical signals of these peripheral devices to signals that drive the motors corresponding to the proper set of doors. We note that because the house will be very slow in comparison to a modern computer, the display screen will be updated very slowly (so we won't be able to watch a film except over a long time like perhaps months). We note as well that we would need to use at least about the number of doors as we might find inside all the houses that exist in the US today (and this would run only very crude programs with low resolution graphics).
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* "''As the player piano playing new music is not the stuff of patent law, neither is the mathematics that is Alappat’s “rasterizer.”''" (From the minority opinion in the [[US CAFC]]'s 1994 [[in re Alappat]] decision)
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* A basic calculator does not become a new calculator when you punch in a new calculation for it to perform.
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* When you use a record player, you get music. The music might be technical, innovative, new, etc. but no one will ever get a patent on a combination of a record player and music.
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<!-- please only add more if you think your example is very comparable to software+computer. We need a small number of very good examples.  Not a large number of mediocre ones. -->
  
 
==Related pages on {{SITENAME}}==
 
==Related pages on {{SITENAME}}==
 
* [[Arguments]]
 
* [[Arguments]]
 
* [[Software is math]]
 
* [[Software is math]]
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* [[Choose your words]]
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* [[Choosing words to use in legal proposals]]
 
* [[Patenting software in ROM]]
 
* [[Patenting software in ROM]]
 
* [[Analogies]]
 
* [[Analogies]]
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** [[Workspace: A house that computes (analogy)]]
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* [[Computer simulations and representations]]
  
 
==External links==
 
==External links==
  
 
* [http://bosson.blogspot.com/2009/11/software-is-special-purpose-machines.html Software is a special purpose machine says microsoft]
 
* [http://bosson.blogspot.com/2009/11/software-is-special-purpose-machines.html Software is a special purpose machine says microsoft]
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* [http://www.groklaw.net/article.php?story=20091029172602205 Correcting Microsoft's Bilski Amicus Brief -- How Do Computers Really Work?], [[Groklaw]] guest article
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* [http://www.groklaw.net/article.php?story=20091029172602205 Correcting Microsoft's Bilski Amicus Brief -- How Do Computers Really Work?], 31 Oct 2009, '''[[Groklaw]]'''
 
* [http://people.ffii.org/~jmaebe/swpat/cii.html Patents on CII's and pure software patents: what's in a name?], '''Jonas Maebe''' - ''discusses washing machines and mobile phones''
 
* [http://people.ffii.org/~jmaebe/swpat/cii.html Patents on CII's and pure software patents: what's in a name?], '''Jonas Maebe''' - ''discusses washing machines and mobile phones''
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* [http://en.wikipedia.org/wiki/List_of_patent_claim_types#Beauregard Patent types: Beauregard], '''Wikipedia'''
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* [https://en.wikipedia.org/wiki/Piano_roll_blues Piano roll blues], '''Wikipedia'''
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* [http://itlaw.wikia.com/wiki/Beauregard_claim Beauregard claim], '''IT Law Wiki'''
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==References==
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{{reflist}}
  
  
 
{{footer}}
 
{{footer}}
 
[[Category:Pages with analysis of legal wordings]]
 
[[Category:Pages with analysis of legal wordings]]

Revision as of 06:16, 10 March 2014

The "new machine" argument is an attempt by patent lawyers to fool examiners and judges by presenting a non-novel component (the computer) together with a non-patentable component (the software) and get a patent on the combination, even though neither component is actually patentable and the act of putting the software on a computer is trivial and expected.

The patent applications usually mention a computer or a "storage medium". When defending such patents in court, patent lawyers sometimes describe the idea as creating a "new machine" because the computer appears to have gained a new ability, when in reality the computer could always perform these tasks. So, instead of claiming this:

  • a process which does X, using a computer

The patent lawyer writes this:

  • a computer which can do X

This is sometimes called a Beauregard claim in the US.

US case law

Those who argue that software can make a new machine sometimes use the "as a whole" phrase from the Diamond v. Diehr ruling by US Supreme Court on 3 March 1981. Ben Klemens refutes this argument in his book Math You Can't Use and in the amicus brief he wrote for the CAFC case in re Bilski.

In re Alappat (1994)

A patent of this type was upheld by the US CAFC in 1994 in the In re Alappat case. The patent was on using anti-aliasing to improve image display, and the court agreed that "a general purpose computer in effect becomes a special purpose computer".

In re Beauregard (1995)

In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).

Example "Beauregard claim"

One example given by Patently-O is claim #2 of this patent application:[1]

2. A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:

a) obtaining credit card information relating to the transactions from the consumer; and

b) verifying the credit card information based upon values of plurality of parameters, in combination with information that identifies the consumer, and that may provide an indication whether the credit card transaction is fraudulent, wherein each value among the plurality of parameters is weighted in the verifying step according to an importance, as determined by the merchant, of that value to the credit card transaction, so as to provide the merchant with a quantifiable indication of whether the credit card transaction is fraudulent,

wherein execution of the program instructions by one or more processors of a computer system causes that one or more processors to carry out the further steps of;

[a] obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;

[b] constructing a map of credit card numbers based upon the other transactions; and

[c] utilizing the map of credit card numbers to determine if the credit card transaction is valid.

3. A method for verifying the validity of a credit card transaction over the Internet comprising the steps of:

a) obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;

b) constructing a map of credit card numbers based upon the other transactions and;

c) utilizing the map of credit card numbers to determine if the credit card transaction is valid.

UK case law

From the Symbian ruling by UK Court of Appeal on 8 October 2008 declared that yes, software can turn an old computer into a new machine:

56. Putting it another way, a computer with this program operates better than a similar prior art computer. To say "oh but that is only because it is a better program – the computer itself is unchanged" gives no credit to the practical reality of what is achieved by the program. As a matter of such reality there is more than just a "better program", there is a faster and more reliable computer.

Analogies

  • "As the player piano playing new music is not the stuff of patent law, neither is the mathematics that is Alappat’s “rasterizer.”" (From the minority opinion in the US CAFC's 1994 in re Alappat decision)
  • A basic calculator does not become a new calculator when you punch in a new calculation for it to perform.
  • When you use a record player, you get music. The music might be technical, innovative, new, etc. but no one will ever get a patent on a combination of a record player and music.

Related pages on ESP Wiki

External links

References

  1. ↑ http://www.patentlyo.com/patent/2011/08/if-the-software-method-is-not-patentable-then-neither-is-the-computer-readable-medium.html
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