Everlasting software

Harvard Law Review

Volumn 125, Issue 6, 2012, Pages 1454-1475

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EID: 84859947183     PISSN: 0017811X     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Note

References (175)

1. John R. Allison et al., Patent Quality and Settlement Among Repeat Patent Litigants, 99 GEO. L.J. 677, 695-696 (2011).
2. James Bessen & Michael J. Meurer, PATENT FAILURE 66-67 (2008).
3. Pamela Samuelson, Benson Revisited: The Case Against Patent Protection for Algorithms and Other Computer Program-Related Inventions, 39 EMORY L.J. 1025, 1026, 1142-1143 (1990) (arguing that there are already enough incentives to innovate in the software industry that patents are not needed).
4. James Gleick, Patently Absurd, N.Y. TIMES, Mar. 12, 2000, 6 (Magazine), at 44.
5. Arguing that software should not be patentable because it is about "thought and abstraction" rather than "nuts[ ]and[ ]bolts," id. at 46).
6. U.S. Patent No. 4,528,643 col. 5 ll. 1-31 (filed Jan. 10, 1983).
7. Tarek N. Fahmi & Elena B. Dreszer, De Novo Review of Claims Construction or a Wasted Effort of the District Court: Interactive Gift Express, Inc. v. CompuServe, Inc., 19 SANTA CLARA COMPUTER & HIGH TECH. L.J. 315, 315 (2002).
8. '643 Patent col. 2 ll. 62-68, col. 3 ll. 1-3.
9. Id. col. 5 ll. 32-50.
10. Id. col. 5 ll. 35-68, col. 6 ll. 1-11, fig.3.
11. Id. col. 4 ll. 35-59, col. 6 ll. 11-23. Freeny's claim 1, central to the ensuing dispute, recites: 1. A method for reproducing information in material objects utilizing information manufacturing machines located at point of sale locations, comprising the steps of: providing from a source remotely located with respect to the information manufacturing machine the information to be reproduced to the information manufacturing machine, each information being uniquely identified by a catalog code; providing a request reproduction code including a catalog code uniquely identifying the information to be reproduced to the information manufacturing machine requesting to reproduce certain information identified by the catalog code in a material object.
12. Providing an authorization code at the information manufacturing machine authorizing the reproduction of the information identified by the catalog code included in the request reproduction codes; and receiving the request reproduction code and the authorization code at the information manufacturing machine and reproducing in a material object the information identified by the catalog code included in the request reproduction code in response to the authorization code authorizing such reproduction. Id. col. 28 ll. 22-47.
13. Fahmi & Dreszer, supra note 4, at 317.
14. Id. at 317-18. An NPE is a company that owns patents but does not produce products. It licenses the patents to other companies and may sue companies that refuse to pay for a license.
15. Michael Risch, Patent Troll Myths, 42 SETON HALL L. REV. (forthcoming April 2012).
16. See Pre-W3C Web and Internet Background, W3C, http://www.w3.org/2005/01/timelines/timeline-2500x998.png (last visited Feb. 25, 2012).
17. Freeny himself has said, "I didn't foresee the Internet."
18. Fahmi & Dreszer, supra note 4, at 318.
19. Edmund B. Burke, For Once, Law Anticipates Technology: The E-Data Patent Saga, EDUCOM REV., Mar.-Apr. 1997, at 6, 6.
20. Fahmi & Dreszer, supra note 4, at 318.
21. See Interactive Gift Express, Inc. v. CompuServe Inc., 47 U.S.P.Q.2d (BNA) 1797, 1801, 1804-06 (S.D.N.Y. 1998).
22. Fahmi & Dreszer, supra note 4, at 320.
23. See Interactive Gift Express, 47 U.S.P.Q.2d (BNA) at 1804-08.
24. Id. at 1809-1810.
25. Interactive Gift Express, Inc. v. CompuServe Inc., 256 F.3d 1323, 1349 (Fed. Cir. 2001).
26. Id. at 1335, 1338, 1340, 1342, 1344.
27. See E-Data Corp. v. Corbis Corp., No. C04-1733L, 2005 WL 1838614, at *3 (W.D. Wash. Aug. 1, 2005).
28. At the outset, a brief primer on the scope of patent protection may be helpful. A patent's claims define its coverage. A later product that falls within the language of the claims is said to be infringing. However, the patentee cannot simply claim whatever she wants; rather, she can claim only that for which she has provided an adequate written description that shows 'possession' of the invention and enables another to practice it.
29. This description, called the disclosure, is provided in the other main part of the patent, the specification. In addition, the patentee cannot claim what someone else has already invented or what would be obvious. The body of preexisting work to which reference is made in testing for novelty and nonobviousness is known as the prior art.
30. Peter S. Menell, Forty Years of Wondering in the Wilderness and No Closer to the Promised Land: Bilski's Superficial Textualism and the Missed Opportunity to Return Patent Law to Its Technology Mooring, 63 STAN. L. REV. 1289, 1292-1295 (2011).
31. Robert Patrick Merges & John Fitzgerald Duffy, PATENT LAW AND POLICY 14-23 (4th ed. 2007).
32. U.S. Patent No. 5,205,473 col. 4 ll. 63-68, col. 5 ll. 1-2 (filed Mar. 19, 1992).
33. One study has found that the ease of designing around a patent is the most significant reason for companies not to pursue a patent.
34. Wesley M. Cohen et al., Protecting Their Intellectual Assets: Appropriability Conditions and Why U.S. Manufacturing Firms Patent (or Not) 14-15 (Nat'l Bureau of Econ. Research, Working Paper No. 7552, 2000).
35. 658 F.3d 1347 (Fed. Cir. 2011).
36. Id. at 1350-51 (citing Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1354-55 (Fed. Cir. 2003)).
37. Id. (citing Medtronic, 339 F.3d at 1355).
38. Id. (citing Medtronic, 339 F.3d at 1354-55).
39. Id. (citing Medtronic, 339 F.3d at 1355).
40. At issue was claim 25, which depends on the independent claim 22. The two claims together read: 22. A pre-deployment balloon expandable stent structure adapted for percutaneous delivery to the curved coronary arteries, the stent structure being generally in the form of a thin-walled metal tube having a longitudinal axis, the stent structure having a multiplicity of closed perimeter cells, each cell having one or more undulating sections, each undulating section having a generally curved shape and having a first end point and a second end point wherein a line drawn from the first end point to the second end point is generally parallel to the stent's longitudinal axis.
41. The stent of claim 22 wherein the undulating section of each closed perimeter cell comprises a 'U' shaped curve. Id. at 1355 (emphases omitted) (quoting U.S. Patent No. 5,879,370 col. 6 ll. 17-26, 35-36 (filed May 28, 1997)).
42. Id. at 1357-1358.
43. Id.
44. This concept of designing around similarly applies in the biopharmaceutical context because a patent typically covers a specific composition, which can be designed around if a competitor finds a different composition that performs the same function. An example is Duramed Pharms., Inc. v. Paddock Labs., Inc., 644 F.3d 1376 (Fed. Cir. 2011), which involved a patent to a 'conjugated estrogen pharmaceutical composition[] for use in hormone replacement therapies.'
45. Id. At 1378. The patent claimed a conjugated estrogen composition coated with a moisture barrier coating (MBC) comprising ethylcellulose. Id. The MBC was needed to prevent breakdown of the conjugated estrogen during storage. Id. The alleged infringer produced a conjugated estrogen compound coated with an MBC made of polyvinyl alcohol. Id. Because the material used in the MBC was not the claimed ethylcellulose, the court found no infringement. See id. at 1379-82.
46. Bessen & Meurer, supra note 2, at 67, 200.
47. Ex Parte Reexamination Certificate, U.S. Patent No. 5,960,411 col. 1 ll. 23-30, col. 2 ll. 1-15 (issued July 13, 2010).
48. See infra pp.1465-66 (describing how programs can be ported from one platform to another). However, the ENIAC would not be able to perform methods requiring a network.
49. That is, any traditional computer. Quantum computers, which are relegated to special purpose tasks, perform methods using different algorithms.
50. In re Swinehart, 439 F.2d 210, 212 (C.C.P.A. 1971). Functional claiming does not require using means-plus-function claiming under 35 U.S.C. § 112, para. 6 (2006). In means-plus-function claiming, the inventor claims 'means for performing function X' rather than reciting a specific structure. See U.S. PATENT & TRADEMARK OFFICE, MANUAL OF PATENT EXAMINING PROCEDURE § 2181, at 2100-234 to -237 (8th ed. Rev. 8, July 2010) [hereinafter MPEP], available at http://www.uspto.gov/web/offices/pac/mpep/index.htm.
51. The inventor claims all structures equivalent to those disclosed in the specification for performing a certain function. Id. However, means-plus-function claiming often backfires on the patentee. Patents are often found invalid because they do not clearly disclose the structure that performs the function claimed using 35 U.S.C. § 112, para. 6.
52. Christa J. Laser, A Definite Claim on Claim Indefiniteness: An Empirical Study of Definiteness Cases of the Past Decade with a Focus on the Federal Circuit and the Insolubly Ambiguous Standard, 10 CHI.-KENT J. INTELL. PROP. 25, 37 tbls.6-7 (2010).
53. In software, it is especially common for courts to find that insufficient structure is disclosed.
54. James Farrand et al., "Reform" Arrives in Patent Enforcement: The Big Picture, 51 IDEA 357, 418-420 (2011).
55. What is or is not sufficient structure is unclear.
56. Paul R. Kitch, Step-Plus-Function: Just What Have We Stepped Into?, 7 J. MARSHALL REV. INTELL. PROP. L. 117, 127 n.64 (2007).
57. Therefore, patent attorneys often avoid means-plus-function claiming. See id. Plain vanilla functional claiming is seen as more effective.
58. The typical software patent will first recite a method comprising performing steps X, Y, and Z on a computer. See, e.g., U.S. Patent No. 6,285,999 col. 8 ll. 54-68 (filed Jan. 9, 1998). Second, it will recite a computer system 'configured to' perform steps X, Y, and Z. See, e.g., U.S. Patent Pub. 2009/0077056 claim 17 (filed Sept. 17, 2007). Third, it will recite a computer readable medium containing instructions that perform steps X, Y, and Z. See, e.g., '999 Patent col. 10 ll. 38-54.
59. Any invention can be viewed at two levels: (1) what it does and (2) how it does it. The first aspect is the method and the second aspect is the implementation details, such as what physical apparatus is used or what objects are operated upon. Therefore, abstracting away implementation details necessarily implies there are fewer ways for an invention to obsolesce. There would have to be a completely new way of doing things rather than just a change in implementation.
60. For instance, Bernard Bilski tried to patent the method of hedging risk, which is unlikely to become obsolete any time soon. See Bilski v. Kappos, 130 S. Ct. 3218, 3231 (2010).
61. Fonar Corp. v. Gen. Elec. Co., 107 F.3d 1543, 1549 (Fed. Cir. 1997) ('[N]ormally, writing code for ... software is within the skill of the art, not requiring undue experimentation, once its functions have been disclosed.'); Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 Fed. Reg. 7162, 7171 (Feb. 9, 2011) ('Computer-implemented inventions are often disclosed and claimed in terms of their functionality.
62. This is because writing computer programming code for software to perform specific functions is normally within the skill of the art once those functions have been adequately disclosed.').
63. Dan L. Burk & Mark A. Lemley, Is Patent Law Technology-Specific?, 17 BERKELEY TECH. L.J. 1155, 1162-1164 (2002).
64. For example, many web portals provide access to freelance programmers who will implement any specified functionality for a small fee. See, e.g., ELANCE, https://www.elance.com (last visited Feb. 25, 2012).
65. Physics lacks a single unifying theory and indeed one may never be found.
66. Stephen Hawking & Leonard Mlodinow, THE GRAND DESIGN 7-8 (2010).
67. Even if all physical laws were known, it would be impractical to solve equations for the behavior of every atom in order to predict the behavior of a macro-level object. See id. at 32-33.
68. Morton Tavel, CONTEMPORARY PHYSICS AND THE LIMITS OF KNOWLEDGE 213-219 (2002) (describing "chaos," a type of behavior that is very difficult to predict despite being governed by deterministic rules).
69. See 35 U.S.C. § 112, para. 1 (2006).
70. In re Hyatt, 708 F.2d 712, 714-15 (Fed. Cir. 1983). A claim's scope must be commensurate with the extent of the enabling disclosure, id., and the inventor must provide a written description sufficient to show 'possession' of the invention, Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351-52 (Fed. Cir. 2010).
71. The first patent to a coronary stent appears to be U.S. Patent No. 6,974,475 to Dr. Henry Wall. Ron Winslow, Will Stent Makers Fight Dentists Patent Tooth and Nail?, WALL STREET JOURNAL, Jan. 26, 2006, at B1. The patent claims are quite specific in the physical design of the stent that allows it to expand and stay in place as necessary. See U.S. Patent No. 6,974,475 col. 5 ll. 38-60 (filed Dec. 8, 1987).
72. 304 U.S. 364 (1938).
73. Id. at 369-372.
74. Id. at 368 (quoting U.S. Patent No. 1,410,499 (filed Feb. 20, 1917)).
75. Id. at 369-370.
76. Id. at 371, 373-375.
77. 441 F.2d 660 (C.C.P.A. 1971).
78. Id. at 660.
79. Id. at 661 (quoting U.S. Patent Application Serial No. 550,711 (filed May 17, 1966)).
80. Id. at 661, 664.
81. Id.
82. Id.
83. Id. Similarly, method claims to all possible physical ways of doing something in the real world are also likely to be denied. In a famous case, Samuel Morse made a broad method claim to telegraphy and was denied. He claimed 'the use of the motive power of the electric or galvanic current ... for marking or printing intelligible characters, letters, or signs, at any distances' by any means at all.
84. O'Reilly v. Morse, 56 U.S. (15 How.) 62, 86 (1854). In his claim he stated: 'I do not propose to limit myself to the specific machinery, or parts of machinery, described in the foregoing specifications and claims.' Id. The Supreme Court found this claim invalid because Morse was claiming beyond what he had disclosed. Id. at 112-13. Morse had not disclosed all ways of using the motive power of electric or galvanic current to transmit a message. Id.
85. See In re Swinehart, 439 F.2d 210, 212-13 (C.C.P.A. 1971).
86. 35 U.S.C. § 112, para. 1 (2006).
87. See In re Guess, 347 F. App'x 558, 560 (Fed. Cir. 2009); MPEP, supra note 38, § 2131.02.
88. The basic rule is that an inventor wants the claims to cover later products, so she can claim infringement, but not to cover any earlier products, because then her patent would be invalid for not being 'new.'
89. Cf. O'Reilly, 56 U.S. (15 How.) at 113 (describing how Morse had not described all possible ways of using electromagnetism to transmit a message because new discoveries in electromagnetism were still possible).
90. Thus, this Note's conclusion is in contrast to James Bessen and Professor Michael Meurer's assertion that any kind of technology can be claimed abstractly.
91. Bessen & Meurer, supra note 2, at 66-67, 213-14.
92. One might think of software being defined as "software that does X."
93. See sources cited supra note 42.
94. Bessen and Meurer, on the other hand, believe that it is patent attorneys' decision to claim inventions abstractly, perhaps using functional language, that leads to patent breadth. BESSEN & MEURER, supra note 2, at 213.
95. Jean E. Sammet, PROGRAMMING LANGUAGES 41-43 (1969).
96. Id.
97. At worst, one can almost always emulate one platform on another. Id. at 41.
98. Donald E. Knuth, THE ART OF COMPUTER PROGRAMMING 11, 120-152 (2d ed. 1973).
99. The processor must have enough memory to store the results of all its computations.
100. U.S. Patent No. 7,778,987 col. 6 ll. 1-6 (filed Oct. 6, 2006).
101. Note that software speed is not a secondary characteristic. Speed is not a design choice made in creating software. It is an end result of all the design choices.
102. Some might suggest that software patents be narrowed by disclosure and limitation to a specific software architecture.
103. Burk & Lemley, supra note 42, at 1166 n.46.
104. However, this suggestion is isguided because software architecture, like other secondary characteristics of software, is completely fungible. Although there are conventional software architectures to use in creating certain types of software, there is nothing to prevent a programmer from translating a program written with a specified software architecture into an arbitrarily different software architecture.
105. Len Bass et al., SOFTWARE ARCHITECTURE IN PRACTICE 5 (2d ed. 2003).
106. Discussing how two different software architects, when given the same requirements specification, would likely create different software architectures). One could write any computer program with almost no software architecture at all, just one monolithic function. See id. at 22 ('In the most trivial case, a system is itself a single element - uninteresting and probably nonuseful but an architecture nevertheless.').
107. Thus, the suggestion to limit software patents to specific software architectures is no better than limiting software by programming language, operating system, or platform. This Note's conclusions in this regard contrast with those of Professors Dan L. Burk and Mark A. Lemley, who believe that such secondary characteristics should be required in the specification and possibly the claims of software patents.
108. Burk & Lemley, supra note 42, at 1163-1167, 1191-1192.
109. See supra section I.A.2.
110. Peter Shirley & Steve Marschner, FUNDAMENTALS OF COMPUTER GRAPHICS 4 (3d ed. 2009).
111. See Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323, 1329 (Fed. Cir. 2011).
112. See id. Several patent law doctrines, including enablement, use a standard based on what a person having ordinary skill in the art would know.
113. Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1371-72 (Fed. Cir. 2008).
114. See Ultramercial, 657 F.3d at 1329.
115. MySpace, Inc. v. GraphOn Corp., 756 F. Supp. 2d 1218, 1223 (N.D. Cal. 2010).
116. U.S. Patent No. 6,324,538 col. 12 ll. 45-59 (filed July 7, 1998).
117. MySpace, 756 F. Supp. 2d at 1222. Patents with wide coverage, however, are vulnerable because only one prior art species is needed for invalidation. Such invalidation occurred in MySpace: the patent was completely invalidated by a prior art system that was in use over eighteen months before the patent was filed. Id. at 1224, 1236-43.
118. Page Rank. Technology Overview, GOOGLE, http://www.google.com/about/company/tech.html (last visited Feb. 25, 2012).
119. Google History, GOOGLE, http://www.google.com/about/company/history.html (last visited Feb. 25, 2012).
120. U.S. Patent No. 6,285,999 col. 1 ll. 51-67 (filed Jan. 9, 1998).
121. Id.
122. Id.
123. Id. col. 2 ll. 51-67, col. 3 ll. 1-3.
124. Id. col. 3 ll. 4-10.
125. Id. col. 8 ll. 55-67.
126. See supra section I.B.
127. '999 Patent col. 4-6.
128. See Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006).
129. 35 U.S.C. § 112, para. 1 (2006).
130. Steven S. Skiena, THE ALGORITHM DESIGN MANUAL 130 (2d ed. 2008) (proving that currently known sorting algorithms are the fastest possible).
131. '999 Patent col. 5 ll. 21-23.
132. Bessen & Meurer, supra note 2, at 22-23, 187.
133. Id. at 22.
134. Id. at 213; see also id. at 66-67 (describing what the authors believe to be overly broad claiming of a biotechnology invention).
135. Id. at 47.
136. Id. at 199-200.
137. Id. at 66-67, 213.
138. Id. at 66-67, 213 ('[T]oo many software patents claim all technologies with similar form or all means of achieving a result, when the actual invention is much more limited and often trivial. Id. at 213.).
139. Id. at 210.
140. Id. at 199-200.
141. Id. at 47, 67.
142. Id.
143. Burk & Lemley, supra note 42, at 1185-1186.
144. Id. at 1191-1192.
145. Id. at 1163-1167, 1170-1171.
146. Id. at 1191-1192.
147. Id. at 1170-1171.
148. Id.
149. Bessen & Meurer, supra note 2, at 22, 213.
150. Burk & Lemley, supra note 42, at 1170-1171.
151. Allison et al., supra note 1, at 707.
152. See Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246, 1257 (Fed. Cir. 2011) (Lourie, J., concurring in part and dissenting in part); Oskar Liivak, Rescuing the Invention from the Cult of the Claim 3, 5 (Feb. 24, 2011) (unpublished manuscript), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1769270.
153. Arlington Indus., 632 F.3d at 1257-58 (Lourie, J., concurring in part and dissenting in part); Liivak, supra note 119, at 6-8.
154. Allison et al., supra note 1, at 707.
155. Risch, supra note 10, at 27-28.
156. Allison et al., supra note 1, at 680-81.
157. Id. at 706-707.
158. Studies have shown that, while productive companies value patents both for protecting their own products and for their blocking function, they value the protective function more. Cohen et al., supra note 24, at 17-18.
159. Inherent anticipation is when prior art contains the invention, but the invention was not recognized by the prior inventors. See In re Schreiber, 128 F.3d 1473, 1479-80 (Fed. Cir. 1997).
160. Invalidating prior art could easily exist without the knowledge of the inventors. Patents and printed publications anywhere in the world are all prior art, as are any public uses in the United States. 35 U.S.C. § 102 (2006).
161. If, however, overclaiming were the reason for breadth, prior art invalidations would be less likely. The patentee could just claim an invention far into the future that no one had enabled yet. Overclaiming would allow the patentee to claim the invention before prior art exists.
162. Bessen & Meurer, supra note 2, at 67.
163. This may be an alternative way of viewing what Bessen and Meurer deem to be claim terms in software patents 'chang[ing] in meaning over time.' Id. (emphasis omitted).
164. See supra notes 4-8 and accompanying text.
165. Interactive Gift Express, Inc. v. CompuServe Inc., 256 F.3d 1323, 1338 (Fed. Cir. 2001).
166. Fahmi & Dreszer, supra note 4, at 318.
167. U.S. Patent No. 4,528,643 col. 28 ll. 22-47 (filed Jan. 10, 1983).
168. See SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1329-30 (Fed. Cir. 2010) (construing the term 'communicati[ng]' to include communication over a series of links (alteration in original)).
169. Fahmi & Dreszer, supra note 4, at 317.
170. For an example of a court reading in such limitations, see the lower court ruling for the defendants in Interactive Gift Express, Inc. v. CompuServe Inc., 47 U.S.P.Q.2d (BNA) 1797, 1809-10 (S.D.N.Y. 1998), vacated, 231 F.3d 859 (Fed. Cir. 2000), opinion withdrawn and superseded on reh'g in part, 256 F.3d 1323 (Fed. Cir. 2001).
171. Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246, 1257 (Fed. Cir. 2011) (Lourie, J., concurring in part and dissenting in part).
172. Risch, supra note 10, at 2.
173. Bessen & Meurer, supra note 2, at 91-94, 144-146.
174. Edward Van Gieson & Paul Stellman, Killing Good Patents to Wipe Out Bad Patents: Bilski, the Evolution of Patentable Subject Matter Rules, and the Inability to Save Valuable Patents Using the Reissue Statute, 27 SANTA CLARA COMPUTER & HIGH TECH. L.J. 403, 403-404 (2011).
175. Bilski v. Kappos, 130 S. Ct. 3218, 3227-28 (2010).