Sometime ago the CAFC released decision which seemed to confirm the judicial affirmation of patenting software. The case involved some technology from Textronix. Well, according to an article published in the Information Law Alert (and kindly made available for you all), the Textronix people are claiming that their case involved just hardware. Go figure. Greg Aharonian Internet Patent News Service (for subscription info, send 'help' to patents@world.std.com) (for prior art search services info, send 'prior' to patents@world.std.com) ==================== *********************************************************** Information Law Alert ||||||||| || |||| * a voorhees report * || || || || * * || || || || * 718-369-0906 * || || ||||||||| * voice * || || || || * 718-369-3250 * || || || || * fax * ||||||||| |||||||| || || markvoor@phantom.com* *********************************************************** 411 First St., Brooklyn, NY 11215-2507 September 9, 1994 BIG COURT WIN WASN'T WHAT IT SEEMED TO BE Alappat Decision Ratified Ability To Win Patents On Math-Embedded Circuitry, Not Software, As Many Fans Are Claiming, Says Owner A recent Federal Circuit decision supposedly upholding the validity of software patents is much narrower in scope, according to a lawyer of Tektronix, Inc., the party that won the case. "It was directed at hardware, not software," says Francis Gray, an in-house lawyer at Tektronix, the world's leading maker of oscilloscopes and a player in color printers and network terminals. On July 28, the Federal Circuit ruled that Tektronix's invention, a "rasterizer," which is used to create smooth, wave forms on an oscilloscope, deserved a patent. The 6-2 ruling (with three abstentions) overturned a controversial ruling by a patent office appellate panel. Fans of software patents say the ruling vindicates their belief that inventions related to software should receive patent protection. Critics decried it as another obstacle that programmers must avoid in writing software without risk of legal trouble. Software is caught in a border war between these two sides, which both argue that economic ruin and creative stagnation will follow if their side does not prevail. Gray says both sides miss the main message of the ruling. Tektronix brought the legal challenge for the sole purpose of seeking a ruling on whether digital circuitry governed by mathematical formulas can be patented, he said. The cause of zealotry on both sides of the software patent is not Tektronix's cause. Tektronix's fortunes rest largely on a foundation of digital circuitry technology. In past Tektronix applications, Gray says, the patent office looked askance at circuitry inventions, simply because they embody mathematical formulas. BOILING WATERS The Supreme Court has said that a formula cannot be patented on the theory that laws of nature are discoveries not inventions. But a formula can play a part in an invention so long as that invention is useful. The company is much less interested in whether the ruling may spill over into the boiling waters of software. The company simply wanted to protect its research and development, Gray says. In the final paragraphs of his majority opinion, however, Judge Giles Rich tantalized the computer industry with the observation that "a computer operating pursuant to software may represent patentable subject matter." Gray considers that section as an aside that was unessential to victory. The heart of the majority opinion rests on the conclusions that the Tektronix rasterizer was a machine. There is no justification, the majority said, in rejecting the patent simply because the machine made use of mathematics. The patent office appellate panel, on the other hand, viewed the embedded math as broadly as possible, so that it no longer had a link to the apparatus in the application. Under that reading, the invention flunked because the math was akin to a natural law that can't be patented. The majority opinion said that it was necessary to look at the invention in its entirety. "This is not a disembodied mathematical concept which may be characterized as an `abstract idea,' but rather a specific machine to produce a useful, concrete and tangible result," Rich wrote. Gray concedes that "it should not make a difference how an invention is implemented." But he says that the Federal Circuit did not address that issue head on in a way that should give solace to supporters of software patents. Richard Stern of Graham & James, counsel to Seagate Technology, Inc., a hard-drive maker, is not so sure. Stern filed a friend-of-the-court brief opposing a patent for Tektronix. Tektronix's technology boils down to a formula despite the company's and majority's efforts to dress it up as a machine. "The algorithm can be used for anything, like smoothing the jaggies from a laser printer," he says. He is troubled that companies like his client could get caught in a legal trap by a patent that has nothing to do with its business. For example, his client Seagate often embeds sorting algorithms in its hard-drive circuitry as a tool to help the drive head find files. Under Stern's reading of the ruling, an inventor in a different industry could receive a patent on a sorting technique and demand royalties from Seagate. But the patent "hasn't taught the disc drive company how to move the disc head across the disc," he says. Tektronix, on the other hand, shows no sign of using the patent as a get-rich-quick tool. It is relatively small change in the company's portfolio of 1,500 to 2,000 patents. TROUBLED WATERS The patent office will not appeal the ruling, which is not surprising. When she was still in private practice, Nancy Linck, the new patent solicitor, helped write the brief of the American Intellectual Property Law Association urging the position adopted by the majority. The panel that threw out the patent was handpicked by Harry Manbeck, President Bush's patent commissioner. An earlier panel had ruled that the examiner was wrong in denying Tektronix a patent. Manbeck then took the controversial step of packing a new board with allies to achieve the result he wanted. The Federal Circuit affirmed Manbeck's power to orchestrate the board's deliberations, 7-4. The court, however, has spoken decisively on the limits of the commissioner's other powers. This case arose because Manbeck tried to substitute his interpretation of what can be patented for that of the court. It took a billion-dollar company like Tektronix to restore the balance. In Re Kuriappan, P. Alappat, Edward E. Averill, and James Larsen Tektronix (appellant) In-house (Francis Gray) Marger, Johnson, McCollom & Stolowitz, Porland, Ore.(Alexander Johnson, Alan McCollom, Peter Meza) Patent and Trademark Office (appellee) In-house (Fred McKelvey, Lee Barrett, Richard Schafer, Albin Drost, John Dewhirst) Friends of the Court Federal Circuit Bar Assn. Keil & Weinkauf (Gerald Bjorge) Finnegan, Henderson, Farabow, Garrett & Dunner (Allen Sokal) Seagate Technology In-house (Edward Heller, III) Graham & James (Richard Stern) Intellectual Property Owners In-house (Herbert Wamsley, Richard Witte) American Intellectual Property Law Assn. Cushman, Darby & Cushman Nancy Linck (now U.S. patent solicitor) Wegner, Cantor, Mueller & Player (Harold Wegner) How The Judges Ruled (On The Merits) Majority: Rich, Newman, Lourie, Michel, Plager, and Rader Minority: Archer, Nies No position: Mayer, Clevenger, Schall