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

(house is not short and mp3 player analogy added)
(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.
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"'''.
 
  
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:
  
<blockquote>
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* a process which does ''X'', using a computer
As the player piano playing new music is not the stuff of patent law, neither is the mathematics that is Alappat’s “rasterizer.”
 
</blockquote>
 
  
==The point of these analogies==
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The patent lawyer writes this:
  
Our goal is to show how computers are the same as other things whose use cannot be patented.  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 use of a record player.  This page collects other examples to show why running software on a computer can't be considered patentable.
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* a computer which can do ''X''
  
==Brief analogies==
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This is sometimes called a '''Beauregard claim''' in the [[USA|US]].
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==US case law==
  
=== Calculator ===
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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]].
  
A basic calculator does not become a new calculator when you punch in a new calculation for it to perform.
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===In re Alappat (1994)===
  
=== Car ===
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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''".
  
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 Beauregard (1995)===
  
=== Human ===
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''[[In re Beauregard]], 53 F.3d 1583 ([[US Court of Appeals for the Federal Circuit|Fed. Cir.]] 1995)''.
  
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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====Example "Beauregard claim"====
  
Similarly, a computer system running different software is still the same (already patented) computer system.
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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>
  
=== Fingers v. fork ===
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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 />
 +
<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 />
 +
<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>
  
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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==UK case law==
  
==Long analogies==
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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:
  
=== House ===
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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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</blockquote>
  
A house, whose components and behavior will be described, can be made to be a full working computer.
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==Analogies==
  
The house has doors, motors, sensors, wiring, and a clock. These tangible components are called "hardware". They are built once and their behavior is never changed afterward. Doors open and shut, clocks tick, etc, all according to design. The quality and construction of the doors, clock, sensors, etc, can be patented. These are all tangible things constructed.
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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.
Software is intangible. Software is information. "Creating" software does not create anything tangible. When we add software to the house, we simply rearrange some of the doors in the house (into the open position or else into the closed position). Creating software adjusts the position of components of the house. How can we represent a value of 1 vs 0? By opening a door rather than closing it. Similarly, we can raise our hand vs lowering it. Creating software does not create anything tangible. Creating software rearranges. We open a door or close it; we raise a hand or lower it. We open a pair of scissors or close them. We turn on a light or turn if off. We don't create a new house, person, scissors, or light when we add software to these things. Software is just information. The value in software depends on what we do with that information.
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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. -->
=== mp3 player simulator ===
 
 
 
When a house or computer runs software to behave like an mp3 player, it is still the same house or computer but used differently. It's like a human, robot, pocket calculator, or cooking machine performing a new action (or cooking a new dish) based upon a new set of instructions handed to it. The human, robot, calculator, and cooking machine have not changed to a new machine, even if we decide to call the human "an accountant", the robot "a speedy butler", the calculator "a calculator of distances among planets", or the cooking machine "an apple pie baking machine". Changing a label because the machine is behaving differently is not creating a new machine, but creating a new use. [This page focuses on why a machine patent does not apply to software, and does not consider the case of a process patent.]
 
 
 
We note as well that an mp3 player can be made as a new device entirely. It would use cheaper parts than a full blown computer. It would not be subject to being "erased". The computer (plus speaker system) is still the same computer (plus speaker system) as before simulating the effect (within its limitations) of the mp3 player.
 
  
 
==Related pages on {{SITENAME}}==
 
==Related pages on {{SITENAME}}==
 
* [[Arguments]]
 
* [[Arguments]]
 
* [[Software is math]]
 
* [[Software is math]]
* [[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)]]
 
* [[Computer simulations and representations]]
 
* [[Computer simulations and representations]]
  
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* [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]
* [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==
 +
{{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