1. Are software patents “... anything under the sun made by man...”? © 2006 Peter S. Menell Professor Peter S. Menell Boalt Hall School of Law Berkeley Center for Law & Technology University of California at Berkeley U.S. Patent Software Patents: A Time for a Change? Boston November 2006 Panel on Legal Perspectives

2. U.S. Patent Business Method

3. Software Patent Timeline 1972197819811998 Gottschalk v. Benson “wholly preempt an algorithm” Parker v. Flook program-related invention not patentable if point of novelty is software step Diamond v. Diehr Guts Benson and Flook Process as a whole patentable regardless of software element State Street Bank “useful, concrete, and tangible result”

4. Diamond v. Diehr logic I. Unless otherwise defined, “words will be interpreted as taking their ordinary, contemporary, common meaning.” II. 1793 Patent Act defined statutory subject matter as “any new and useful art, machine, manufacture or composition of matter...” III. 1952 Patent Act replaced “art” with “process” IV. 1952 Patent Act intended statutory subject matter to “include anything under the sun made by man.” H.R. Rep. No. 1923 at 6 V. Under ordinary, contemporary (1981) parlance: software = process = art software patentable

5. Patent Subject Matter Timeline Patent Act of 1793 “any new and useful art, machine, manufacture or composition of matter” “art” = manufacturing process Curtis A Treatise on the Law of Patents 1873 Walker on Patents 1937 Deller’s Edition must produce physical effects heat, light, electricity, magnetism, chemical action; physical change “industrial arts” “specific force” mental steps doctrine Judicial Interpretation

6. Patent Act of 1952 § 101 Subject matter Simplification and Clarification § 103 Nonobviousness § 271 Contributory Infringement Substantive Change

7. Patent Subject Matter Timeline Patent Act of 1793 “any new and useful art, machine, manufacture or composition of matter” Judicial Interpretation “art” = manufacturing process Curtis A Treatise on the Law of Patents 1873 Walker on Patents 1937 Deller’s Edition must produce physical effects heat, light, electricity, magnetism, chemical action; physical change “industrial arts” “specific force” mental steps doctrine Patent Act of 1952 “any new and useful process, machine, manufacture or composition of matter”

8. U.S. Patent Business Method

9. 1952 Patent Act: Legislative History “Art”“Process” to avoid confusion NOT INTENDED TO EXPAND PATENTABLE SUBJECT MATTER U.S. Constitution Article I §8, cl. 8 To Promote the Progress of Science and the useful Arts, by securing for limited Times, to Authors and Inventors, the exclusive Right to their respective Writings and Discoveries. Congress shall have power Prior “art” all limiting doctrines apply

10. 1952 Patent Act: Legislative History to make clear that new uses were patentable Section 100(b): Definition of Process rejects Thuau doctrine (barring patents for new uses) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material

11. U.S. Patent Business Method

12. 1952 Patent Act: Legislative History A person may have “invented” a machine or a manufacture, which may include anything under the sun that is made by man, but it is not necessarily patentable under section 101 unless the conditions of the title are fulfilled. Section 101 sets forth the subject matter that can be patented, “subject to the conditions and requirements of this title.” The conditions under which a patent may be obtained follow, and section 102 covers the conditions relating to novelty. H.R. Rep. No. 1923 at 6

13. “anything under the sun that is made by man” Customary InterpretationMore Plausible Meaning patentable subject matter is expansive merely emphasizes that “all conditions and reqts” of Title 35 must be met for patentability Congress intended to retain all judicial subject matter limitations applies only to “machines” and manufactures” and not “processes” or “compositions of matter” everything except: mathematical formula scientific principle phenomenon of nature

15. 1952 Understanding of “Process” must produce physical effects “industrial arts” “specific force” mental steps doctrine Legal Perspective Technical Perspective Computer Software? Programming? Assembly language no intention to expand scope Fortran (first high level programming language) would not emerge until 1954

16. “Process” Time Warp Hindsight Bias “words will be interpreted as taking their ordinary, contemporary, common meaning.” 19521981 Computer software =process must produce physical effects “industrial arts” “specific force” mental steps doctrine

17. Diamond v. Diehr logicDiamond v. Diehr (il)logic I. Unless otherwise defined, “words will be interpreted as taking their ordinary, contemporary, common meaning.” II. 1793 Patent Act defined statutory subject matter as “any new and useful art, machine, manufacture or composition of matter...” III. 1952 Patent Act replaced “art” with “process” IV. 1952 Patent Act intended statutory subject matter to “include anything under the sun made by man.” H.R. Rep. No. 1923 at 6 V. Under ordinary, contemporary (1981) parlance: software = process = art software patentable ? ? ? [...]

18. State Street Bank: Compounding the Errors II. Supreme Court has acknowledged that patentability extends to “anything under the sun made by man.” III. Narrow limitations: laws of nature, natural phenomena, and abstract ideas IV. Relies on Federal Circuit expansion: Arrhythmia Research Tech, Alappat Giles Rich I. Repetitive use of “any” expansive scope §101 V. Lowers threshold to: “useful, concrete, and tangible result” failure to include full quotation ? ? ? ? ?

19. Giles Rich ACME Diaper Service Section 101 denies patent protection “to one of the greatest inventions of our times, the diaper service.” Giles Rich, “The Principles of Patentability,” 28 Geo. Wash. L. Rev. 393 (1960) We take this opportunity to lay th[e] ill-conceived [business method] exception to rest.... Since the 1952 Patent Act, business methods have been... subject to the same legal requirements for patentability as applied to any other process State Street Bank v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998)

20. U.S. Patent Business Method