by Dennis Crouch
Odds are good that the biggest patent case of the year will be a copyright case. The Supreme Court recently granted certiorari in Google v. Oracle — a case focusing on copyright protections for the JAVA programming interface. The innovations at issue in the case sit near the fuzzy ‘borders’ of copyright and patent law and a number of members of the court will be looking to define those dividing lines.
What is perhaps the key case on-point well known but quite old: Baker v. Selden, 101 U.S. (11 Otto) 99 (1880). Selden had invented a new set of “condensed ledger” forms that improved the practice of bookkeeping. Baker apparently copied the forms and sold them at a good profit. Selden’s Widow then sued for copyright infringement and won in the district and circuit courts. However, the Supreme Court reversed — holding that copyright does not extend to the “art itself:”
The copyright of a book on book-keeping cannot secure the exclusive right to make, sell, and use account books prepared upon the plan set forth in such a book.
Instead of copyright, the Supreme Court suggested that Selden should have pursued patent rights. Here is a long quote from the case:
To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the province of letters-patent, not of copyright. The claim to an invention or discovery of an art or manufacture must be subjected to the examination of the Patent Office before an exclusive right therein can be obtained; and it can only be secured by a patent from the government.
The difference between the two things, letters-patent and copyright, may be illustrated by reference to the subjects just enumerated. Take the case of medicines. Certain mixtures are found to be of great value in the healing art. If the discoverer writes and publishes a book on the subject (as regular physicians generally do), he gains no exclusive right to the manufacture and sale of the medicine; he gives that to the public. If he desires to acquire such exclusive right, he must obtain a patent for the mixture as a new art, manufacture, or composition of matter. He may copyright his book, if he pleases; but that only secures to him the exclusive right of printing and publishing his book. So of all other inventions or discoveries.
The copyright of a book on perspective, no matter how many drawings and illustrations it may contain, gives no exclusive right to the modes of drawing described, though they may never have been known or used before. By publishing the book, without getting a patent for the art, the latter is given to the public. The fact that the art described in the book by illustrations of lines and figures which are reproduced in practice in the application of the art, makes no difference. Those illustrations are the mere language employed by the author to convey his ideas more clearly. Had he used words of description instead of diagrams (which merely stand in the place of words), there could not be the slightest doubt that others, applying the art to practical use, might lawfully draw the lines and diagrams which were in the author’s mind, and which he thus described by words in his book.
Even if the Supreme Court was serious at the time that Seldon should have gone after patent protection, today we know that such an attempt would be seen as improperly claiming an abstract idea under Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). In its petition, Google explains that – as in Seldon, a “monopoly over those
methods and diagrams could be secured only by patent law, not copyright.”
So too here: the Federal Circuit’s decision to extend copyright protection to the Java API declarations effectively grants Oracle a patent-like monopoly over the Java language. . . . The Federal Circuit’s approach wreak havoc on copyright law, but it also risks disturbing the balance between copyright law and patent law, the two principal bodies of law that govern innovation. The Federal Circuit has effectively provided blanket copyright protection to an entire class of computer code. . . . .
[I]f the creator of computer code “wishes to obtain a lawful monopoly on the functional concepts in its software, it must satisfy the more stringent standards of the patent laws,” including novelty and nonobviousness. Quoting Sony Computer Entertainment, Inc. v. Connectix Corp., 203 F.3d 596, 603 (9th Cir.),
cert. denied, 531 U.S. 871 (2000).
Google Petition. Google does not point out that these “functional concepts in its software” also lack patent eligibility under the new Supreme Court decisions.
Lotus v. Borland?
link to en.wikipedia.org.
Makes me wonder if Sun ever tried to patent JAVA?
Anyways, the case is a good example for a sui generis scheme for software.
Obviously when you are a monopoly like google – smashing copyrights (after smashing patent rights) – is a good business move. For the small entity – well not so much. Release the Kraken (anti-trust) !!
Was the fact that the Sup. Ct. split 4-4 in Lotus v. Borland years ago one of the reasons they took cert in this case?
From the link (emphasis added):
“Borland CEO Philippe Kahn took the case to the software development community arguing that Lotus’s position would stifle innovation and damage the future of software development. The vast majority of the software development community supported Borland’s position.”
Because being able to copy is somehow a deterrent to any such detriments to innovation. You know, instead of actually innovating something new or different, being able to copy (without regard to ANY intellectual property protection of any kind) is a “promotion” of innovation…
SUCH is the stuff of “arguments to the crowd:” being able to copy protects innovation,” or “not innovating protects innovating.”
On a separate note, this topic does bring back memories of past conversations between myself and the late Ned Heller (which helped highlight the functional aspects of software — of which, of course — functional aspects are the very things meant to be protected by patents.
The late Mr. Heller did have a difficult time understanding that an item may WELL have more than one aspect (may have aspects that are functional in nature and thus inure the protections of Patent, as well as may have aspects that are expressive in nature and thus inure the protections of Copyright).
I also note from the link that certain judges (Judge Boudin) appears to want to deny the expressive aspects of software altogether: “Michael Boudin wrote a concurring opinion for this case. In this opinion, he discusses the costs and benefits of copyright protection, as well as the potential similarity of software copyright protection to patent protection. He argues that software is different from creative works, which makes it difficult to apply copyright law to software.” I have not ventured deeper to see if this same Judge would then turn and offer patent protection for such a “different from creative works” endeavor by the hand of man.
His writings in the case appear entirely focused on the copyright aspect (and his views on natural limits of THAT type of protection).
Naturally my scheme centering on the consumer of information as a central determination for any Information Age IP system works just fine in the copyright realm. If an item of copyrighted information is not being consumed by a human being, it’s not an infringement. No human mind=no copyright infringement.
An API is consumed by non-human actors. They may not infringe a copyright. Non-human actors certainly may infringe a patent, which protects the functional utility the non-human actor gains by consumption of the information.
Had he used words of description instead of diagrams (which merely stand in the place of words), there could not be the slightest doubt that others, applying the art to practical use, might lawfully draw the lines and diagrams which were in the author’s mind
The 1880 case reflects this in some senses, but what non-human actors are capable of today would have appeared to be pure magic to the 1880 court.
No human mind, no copyright infringement.
Wow, that’s more asinine on the second read through.
A copy machine making a copy has no human mind involved in the copy action.
Your scheme thinks this to be ‘ok’ so long as no human ever gets around to “consuming” that second copy.
“but what non-human actors are capable of today would have appeared to be pure magic to the 1880 court”
I laughed as I read this coming from you (and saw Night Writer yelling out “She’s a witch!”).
Your scheme thinks this to be ‘ok’ so long as no human ever gets around to “consuming” that second copy.
AAAAANNNNNNDDDD?
Does not matter.
Maybe think first about what copyright is, before you launch into your “my scheme works there too”
Any discussion of patent eligibility and provision of case law centered on “Arts” would not be complete without directly noting what Congress did 72 years after that 1880 case (the expansion of the statutory category outside of the hard goods categories such that Process includes more than the traditional Art as that term is understood in patent law context and a wide open door to method innovation).
Dear Google,
Yes, the ridiculous idea that you can patent instructions written for an existing instructable, language-processing computer has deeply damaged the US patent system.
No need to beat around the bush.
Do you need a simple and direct English language explication of the judicial doctrine of Printed Matter (including the important exceptions)? Let me know – there is an easy to understand Simple Set Theory explication available.
Just to clarify Dennis’ deep thoughts here: there was never a moment in the history of the US patent system where you could patent the name given to a set of instructions.
Don’t gaslight your readers with maximalist b.s. Dennis. You’ll just end up looking like another glibertarian money-grubbing a$$.
Translation: if you don’t agree with Malcolm, you are thrown in the One-Bucket of all “Ebil” (as 6 would put it). Maybe Prof. Crouch can borrow RG’s crack pipe.
Notwithstanding the apparent fascination with ancient cases, isn’t the scope of the present copyright statute, especially 37 U.S.C. 102(b) on what is NOT copyrightable ,really what is at stake here?
[The “fair use” “factors” of 37 U.S.C. 107 [other than perhaps (3)] do not seem applicable here?]
It’s not an apparent fascination. It’s a real fascination and it’s also pretty f’ing p@-thetic on Dennis’ part.
You bruhs do know that he’s a patent “scholar” right? That’s kind of what they do.
Google does not point out that these “functional concepts in its software” also lack patent eligibility under the new Supreme Court decisions.
The “functional concepts” might lack eligibility, but the actual algorithms are eligible, even if (in this case) they are obvious.
i.e. A “sort lowest to highest” command is functional, not expressive, and therefore can only be protected by patent, not copyright. But patent wouldn’t allow you to claim the function of sorting. It would only allow you to claim the algorithm which determines how sorting is achieved. It’s entirely possible to find and patent a better way to sort things, or a better sorting algorithm for a particular type of dataset that has particular qualities to it. I guess I can’t say “nobody” but “very few” people assert that all coding is ineligible, so the fact that something *could* be expressed abstractly isn’t really a knock against patent as opposed to copyright protection. Everything can be expressed abstractly if you want to (as most applicants do) pretend you invented more than what you actually invented. You could invent a cure for cancer and abstractly claim “the function of curing cancer” and your claim would also be ineligible – that doesn’t suggest that copyright should pick up the slack, it just suggests that you should hire a competent scrivener that can draft a properly-sized claim.
“Claim the algorithm” falls (rather unsurprising) to Random’s fallacy of mere two rung’ed Ladders of Abstraction.
Just for the record: RG is one of the most coherent and intelligent commenters on this blog. Bildo is the polar opposite in every respect.
While I don’t necessarily agree with RG’s oft-relied upon premise that algorithms for instructable computing machines are eligible subject matter (and I’m not even sure that RG agrees with that!), at least RG responds to reasonable follow up questions. Specifically, when he discusses eligible “algorithms” he has made it clear that he is referring to something far more specific than Judge Newman’s worthless, infinitely expansive non-definition of the term. If I understand correctly, RG believes that an eligible algorithm (i.e., an algorithm with sufficient but still fake “structure”) is one in which what goes in and what comes out are specific numbers, and that algorithm is disclosed in the specification (not left up to the “skilled artisan” to develop in view of the mere disclosure of a desired data processing result to be achieved).
Note that I don’t agree with RG but at least our respective positions are put out there positively and directly, as opposed to each of us just screeching “you can’t stop people from patenting this because nobody will innovate you’re anti-patent you don’t understand innovation or tech” like certain disgustingly ign-0-rant @$$wipes do habitually here and over at Big Jeans Entitled Bro Sweat Lodge.
At just over an hour AFTER telling RG to “put down the patent crack pipe,” Malcolm wants to sing the “praises” of that crack-pipe-wielding fiend with:
“ Just for the record: RG is one of the most coherent and intelligent commenters on this blog.”
Must have been Malcolm’s “One-Bucketing” kicking in.
It’s true that few commenters on patent-lawyer and examiner dominated blogs oppose patenting instructions for computers.
But in the wider world of ordinary people, it’s not “very few” people. It’s a lot of people. Certainly an easy majority once the issues are understood and acknowledged.
Stop puffing on your patent crack pipe.
You do realize that the Lemming crowd of the Slashdot-TechDirt propaganda campaign are NOT the proper measure of Person Having Ordinary Skill In The Art, eh Malcolm?
Everyone knows your bias against this form of innovation, but your “instructions for” only highlights your lack of appreciation of the design choice of “wares” for the computing arts.
Comments are closed.