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Software patent and Software patent and copyright lawcopyright law

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Constitutional basis of Constitutional basis of copyrights and patentscopyrights and patents

US Constitution, Article 1, §8:US Constitution, Article 1, §8: “The Congress shall have the power ...“The Congress shall have the power ... To promote the Progress of Science and the To promote the Progress of Science and the

Useful Arts, by securing for limited Times to Useful Arts, by securing for limited Times to authorsauthors and and inventorsinventors the exclusive Right to their the exclusive Right to their respective respective WritingsWritings andand DiscoveriesDiscoveries.”.”

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Constitutional basis of Constitutional basis of copyrights and patentscopyrights and patents

US Constitution, Article 1, §8:US Constitution, Article 1, §8: “The Congress shall have the power ...“The Congress shall have the power ... To promote the Progress of Science and the To promote the Progress of Science and the

Useful Arts, by securing for limited Times to Useful Arts, by securing for limited Times to authorsauthors and and inventorsinventors the exclusive Right to their the exclusive Right to their respective respective WritingsWritings andand DiscoveriesDiscoveries.”.”

Programs are machines whose Programs are machines whose medium of construction is text.medium of construction is text. ---- Randy DavisRandy Davis

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Copyright basicsCopyright basics �� DefinitionDefinition

�� Original work of authorshipOriginal work of authorship, fixed in a tangible medium, fixed in a tangible medium �� Covers entire workCovers entire work

�� LimitsLimits �� Life of author + 70 yrs, or 95 yrs from publication (for Life of author + 70 yrs, or 95 yrs from publication (for corpcorp)) �� Covers expression, not underlying ideaCovers expression, not underlying idea �� Excludes: “...any idea, procedure, process, system, method of Excludes: “...any idea, procedure, process, system, method of

operation, concept, principle ...” operation, concept, principle ...” �� Obtained by: automatic (since 1988)Obtained by: automatic (since 1988) �� Abridged by: copying (literal and nonAbridged by: copying (literal and non--literal)literal) �� Legally avoided by: independent creationLegally avoided by: independent creation Access + similarity => infringementAccess + similarity => infringement

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Patent basicsPatent basics �� DefinitionDefinition

�� Application of an idea to create something novel, useful, and Application of an idea to create something novel, useful, and nonnon--obvious (prior art)obvious (prior art)

�� Machines, processes, new forms of matterMachines, processes, new forms of matter �� Covers only the claims specifiedCovers only the claims specified �� Provides right to exclude others from making, selling, usingProvides right to exclude others from making, selling, using �� Requires adequate disclosure Requires adequate disclosure

�� LimitsLimits �� 20 years from date of filing20 years from date of filing �� Excludes: Excludes: math formulas, natural laws, mental stepsmath formulas, natural laws, mental steps

�� Obtained by:Obtained by: �� Application to US PTO; expensive, claims examinedApplication to US PTO; expensive, claims examined �� Can be challenged laterCan be challenged later

�� Abridged by: Any use of applicationAbridged by: Any use of application �� Avoided by: Careful searchAvoided by: Careful search

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Baker v. SeldenBaker v. Selden (1879)(1879)

�� The copyright of a work on mathematical The copyright of a work on mathematical science cannot give to the author an science cannot give to the author an exclusive right to the methods of operation exclusive right to the methods of operation which he propounds, or to the diagrams which he propounds, or to the diagrams which he employs to explain them, which he employs to explain them,

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Whelan v. Whelan v. JaslowJaslow, 1986, 1986

�� Claimed that a program written in Basic infringed a Claimed that a program written in Basic infringed aprogram written in EDLprogram written in EDL

�� Programs similar in many ways (functionality, file Programs similar in many ways (functionality, filestructures)structures)

�� No literal code takenNo literal code taken �� Key question: Extent of nonKey question: Extent of non--literal coverage.literal coverage. �� “We must determine whether the “We must determine whether the structurestructure (or (or sequencesequence

and and organizationorganization) of a computer program is ) of a computer program is protectableprotectableby copyright, or whether the protection of copyright by copyright, or whether the protection of copyrightextends only as far as the literal computer code.”extends only as far as the literal computer code.”

�� Key question: Wherein lies the value?Key question: Wherein lies the value?

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““Look and feel” cases Look and feel” cases -- II Lotus v. Paperback Software, Mosaic SoftwareLotus v. Paperback Software, Mosaic Software, 1990, 1990

�� VP Planner manual: “VPVP Planner manual: “VP--Planner is designed to work like Lotus’s Planner is designed to work like Lotus’s 11--22--3, keystroke for keystroke.”3, keystroke for keystroke.”

�� Mosaic software: “The Twin”Mosaic software: “The Twin” �� “Unlike the written code of a program or a flowchart that “Unlike the written code of a program or a flowchart that

can be printed on paper, can be printed on paper, nonliteralnonliteral elementselements——including includingsuch elements as the overall organization of a program, such elements as the overall organization of a program,the structure of a program's command system, and the the structure of a program's command system, and thepresentation of information on the screenpresentation of information on the screen——may be less may be lesstangibly represented. tangibly represented. copyrightable, and if so, how the copyrightable, and if so, how the nonliteralnonliteral elements that elements that are copyrightable may be identified, are central to are copyrightable may be identified, are central todeciding this case.”deciding this case.”

�� Judge Keeton, US District Court, MassachusettsJudge Keeton, US District Court, Massachusetts

Whether these elements are Whether these elements are

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““Look and feel” cases Look and feel” cases -- IIII �� Lotus won (1990)Lotus won (1990) �� Lotus then sued Borland over QuattroLotus then sued Borland over Quattro �� Lotus won (1993)Lotus won (1993) �� Borland appeals Borland appeals �� Appeals court reverses (March, 1995)Appeals court reverses (March, 1995) �� Lotus petitions Supreme Court for a writ of Lotus petitions Supreme Court for a writ of

certiorari (June, 1995)certiorari (June, 1995) �� Supreme Court grants cert (September, 1995)Supreme Court grants cert (September, 1995) �� January, 1996: January, 1996: SUPREME COURT PUNTS!SUPREME COURT PUNTS!

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““Look and feel” cases Look and feel” cases -- IIIIII �� Windows (2.03) has graphical user Windows (2.03) has graphical user

interface, like the Macinterface, like the Mac �� Apple files suit against Microsoft and HP: Apple files suit against Microsoft and HP:

“We invented the desktop metaphor.”“We invented the desktop metaphor.” �� Apple lost, 1992. Apple lost, 1992.

1994.1994. Appeals court upholds, Appeals court upholds,

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What’s patentable?What’s patentable? Patent domain (“statutory subject matterPatent domain (“statutory subject matter——

SSM”): any new and useful process, SSM”): any new and useful process, machine, manufacture, or composition of machine, manufacture, or composition of matter (35 USC matter (35 USC §§101)101)

�� Not SSM: laws of nature, natural Not SSM: laws of nature, natural phenomena, and abstract ideas.phenomena, and abstract ideas.

�� Mathematical algorithms Mathematical algorithms per seper se represent represent nothing more than an abstract idea.nothing more than an abstract idea.

�� Is software patentable?Is software patentable?

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Example software patent claimExample software patent claim �� US Patent 4,672,575, Issued June 9, 1987, assigned to US Patent 4,672,575, Issued June 9, 1987, assigned to

IBMIBM �� 1. A computer system for providing an interactive 1. A computer system for providing an interactive

graphics display comprising: graphics display comprising: �� means for providing a table of selectable cursor graphic means for providing a table of selectable cursor graphic

characters;characters; �� means for selecting one of said cursor graphics characters as means for selecting one of said cursor graphics characters as

the current cursor symbol;the current cursor symbol; �� means for displaying the selected cursor graphic character;means for displaying the selected cursor graphic character; �� means for moving the displayed cursor graphic character on said means for moving the displayed cursor graphic character on said

means for displaying; andmeans for displaying; and �� means for fixing an image of the currently displayed cursor means for fixing an image of the currently displayed cursor

graphic character on said means for displaying at one or more graphic character on said means for displaying at one or morelocations to generate a graphic display, said means for moving locations to generate a graphic display, said means for movingthereafter being capable of moving the currently displayed cursothereafter being capable of moving the currently displayed cursor r graphic character to another location on said means for graphic character to another location on said means for displayingdisplaying

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United States Patent United States Patent 5,960,4115,960,411, issued September 28, 1999, issued September 28, 1999 Method and system for placing a purchase order via a Method and system for placing a purchase order via a

communications network communications network A method of placing an order for an item comprising:A method of placing an order for an item comprising: �� under control of a client system,under control of a client system,

�� displaying information identifying the item; anddisplaying information identifying the item; and �� in response to only a single action being performed, sending a rin response to only a single action being performed, sending a request equest

to order the item along with an identifier of a purchaser of theto order the item along with an identifier of a purchaser of the item to a item to a server system;server system;

�� under control of a singleunder control of a single--action ordering component of the server action ordering component of the serversystem,system, �� receiving the request;receiving the request; �� retrieving additional information previously stored for the purcretrieving additional information previously stored for the purchaser haser

identified by the identifier in the received request; andidentified by the identifier in the received request; and �� generating an order to purchase the requested item for the generating an order to purchase the requested item for the

purchaser identified by the identifier in the received request upurchaser identified by the identifier in the received request using singthe retrieved additional information; andthe retrieved additional information; and

�� fulfilling the generated order to complete purchase of the item,fulfilling the generated order to complete purchase of the item,whereby the item is ordered without using a shopping cart orderiwhereby the item is ordered without using a shopping cart ordering ngmodel.model.

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US Patent 4,405,829 issued

Cryptographic communications system and method Inventors: Rivest; Ronald L.; Shamir; Adi; Adleman; Leonard M., Assignee: Massachusetts Institute of Technology

“The invention may be embodied in other specific forms without departing from the spirit or essential characteristics thereof … and all changes which come within the meaning and range of equivalency of the claims are therefore intended to be embraced therein.

14, 1977 Sept. 20, 1983, filed Dec.

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Patentability of SoftwarePatentability of Software �� Gottschalk v. BensonGottschalk v. Benson, 1972 , 1972

�� Algorithm for BCD to binary conversionAlgorithm for BCD to binary conversion �� Supreme Court: A patent claim that “wholly preSupreme Court: A patent claim that “wholly pre--

empts” a mathematical formula used in a generalempts” a mathematical formula used in a general--purpose digital computer does not define statutory purpose digital computer does not define statutory subject mattersubject matter

�� Diamond v. Diamond v. DiehrDiehr, 1981, 1981�� A process for curing rubber that involved a A process for curing rubber that involved a

mathematical algorithmmathematical algorithm�� Supreme Court: The fact the process it contains an Supreme Court: The fact the process it contains an

algorithm does not exclude it from being SSMalgorithm does not exclude it from being SSM

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ArrythmiaArrythmia v. v. CorazonixCorazonix, 1992, 1992 �� ““...even if mathematical algorithms are ...even if mathematical algorithms are

barred from patentability, the ‘459 patent barred from patentability, the ‘459 patent as a whole does not present a as a whole does not present a mathematical algorithm. The ‘459 patent is mathematical algorithm. The ‘459 patent is a method for detecting the risk of a heart a method for detecting the risk of a heart attack, not the presentation and proposed attack, not the presentation and proposed solution of a mathematical problem.” solution of a mathematical problem.” (CAFC)(CAFC)

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Growth in software patents, Growth in software patents, 19711971--19991999

1996-1999

1996 9000 1997 13000 1998 17500 1999 22500

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In re In re AlappatAlappat, 1994, 1994 �� “…“… a computer operating pursuant to software a computer operating pursuant to software

may represent patentable subject matter, may represent patentable subject matter,provided, of course, that the claimed subject provided, of course, that the claimed subjectmatter meets all of the other requirements of matter meets all of the other requirements ofTitle 35.” Title 35.” ---- Judge Rich (for the majority)Judge Rich (for the majority)

�� “... the line of demarcation between a dedicated “... the line of demarcation between a dedicated circuit and a computer algorithm accomplishing circuit and a computer algorithm accomplishingthe identical task is frequently blurred and the identical task is frequently blurred andbecoming increasingly so as the technology becoming increasingly so as the technologydevelops. develops. often interchangeable with a hardware circuit.”often interchangeable with a hardware circuit.” ---- Judge Rader (concurring)Judge Rader (concurring)

In this field, a software process is In this field, a software process is

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In re In re AlappatAlappat (cont)(cont) �� ““The majority’s holding is dangerous in the The majority’s holding is dangerous in the

following way. following way. obtain a patent for a discovery in mathematics obtain a patent for a discovery in mathematicsas long as some structure is formally recited on as long as some structure is formally recited onthe face of the claim .... Moreover, the patent law the face of the claim .... Moreover, the patent lawwill now engage in a charade wherein claims will now engage in a charade wherein claimsdirected to a particular method of calculating directed to a particular method of calculatingnumbers (for use in a computer) are numbers (for use in a computer) areunpatentableunpatentable, but claims directed to a computer , but claims directed to a computer(performing a particular method of calculating (performing a particular method of calculatingnumbers) are patentable.”numbers) are patentable.” ---- Chief Judge Archer (dissenting)Chief Judge Archer (dissenting)

First, it reasons that one can First, it reasons that one can

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In re LowryIn re Lowry, 1994, 1994

�� ... if a machine is programmed in a certain new ... if a machine is programmed in a certain newand unobvious way, it is physically different from and unobvious way, it is physically different fromthe machine without that program; its memory the machine without that program; its memoryelements are differently arranged. elements are differently arranged. these physical changes are invisible to the eye these physical changes are invisible to the eyeshould not tempt us to conclude that the should not tempt us to conclude that themachine has not been changed.machine has not been changed. More than mere abstraction, the data structures More than mere abstraction, the data structuresare specific electrical or magnetic structural are specific electrical or magnetic structuralelements in a memory ... elements in a memory ... structures are physical entities that provide structures are physical entities that provideincreased efficiency in computer operation.increased efficiency in computer operation. ---- Judge RaderJudge Rader

The fact that The fact that

In short, Lowry's data In short, Lowry's data

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In re Trovato,In re Trovato,19941994

�� ...Putting ...Putting Trovato'sTrovato's claims in their most favorable claims in their most favorable light, the most they provide is a systemic way in light, the most they provide is a systemic way inwhich to compute a number representing the which to compute a number representing theshortest path. A new way to calculate a number shortest path. A new way to calculate a numbercannot be recognized as statutory subject cannot be recognized as statutory subject matter.matter.

�� The goal is to answer the question "What did The goal is to answer the question "What didapplicants invent?" If the claimed invention is a applicants invent?" If the claimed invention is amathematical algorithm, it is improper subject mathematical algorithm, it is improper subjectmatter for patent protection, whereas if the matter for patent protection, whereas if theclaimed invention is an application of the claimed invention is an application of thealgorithm, §101 will not bar the grant of a patent.algorithm, §101 will not bar the grant of a patent.

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State Street v. SignatureState Street v. Signature, 1996 , 1996 �� …… in in ArrythmiaArrythmia …,…,we held that the we held that the

transformation of electrocardiograph signals transformation of electrocardiograph signalsfrom a patient's heartbeat by a machine through from a patient's heartbeat by a machine througha series of mathematical calculations constituted a series of mathematical calculations constituted a practical application of an abstract idea …a practical application of an abstract idea … Today, we hold that the transformation of data, Today, we hold that the transformation of data,representing discrete dollar amounts, by a representing discrete dollar amounts, by amachine through a series of mathematical machine through a series of mathematicalcalculations into a final share price, constitutes a calculations into a final share price, constitutes apractical application of a mathematical practical application of a mathematicalalgorithm, formula, or calculation, because it algorithm, formula, or calculation, because itproduces “a useful, concrete and tangible result” produces “a useful, concrete and tangible result” –– a final share price …a final share price …

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Where things stand todayWhere things stand today �� ““Useful, concrete, and tangible is the Useful, concrete, and tangible is the

current test for satisfying the practical current test for satisfying the practical application requirements of Section 101 application requirements of Section 101 with respect to computerwith respect to computer--implemented implemented inventions.”inventions.” From USPTO training materialsFrom USPTO training materials

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SummarySummary �� Software strains the natural categories of Software strains the natural categories of

patent and copyright.patent and copyright. �� In copyright: Is software a literary work or a In copyright: Is software a literary work or a

functional work, and how do we judge functional work, and how do we judge “similarity”?“similarity”?

�� In patent: How do we draw the line between In patent: How do we draw the line between an “abstract algorithm” and a “useful, tangible, an “abstract algorithm” and a “useful, tangible, concrete” method?concrete” method?

�� The law here is still evolving.The law here is still evolving.