CUADRO SECUNDARIO DE MANDO Y PROTECCIÓN PLANTA SEGUNDA DEMANDA DE POTENCIAS

140 _{Association for Molecular Pathology et al v USPTO et al9 Civ 4515 (US District Court, Southern District of New} York, 2010) at 110, footnote 43 per Sweet J. Similarly, the Court inIn re Warmerdam, 33 F.3d 1354, 1358 (Fed Cir, 1994) noted that “[t]o include some things [in § 101] is to exclude others.” See alsoBilski v Kappos130 S. Ct. 3218 (2010) at 3237 per Stevens J (discussed below).

How software became patentable subject matter

as with the composition of matter the subject of the instant claims,142 _{all relate to inventions}

which clearly have physical manifestations. It is only the category of processes which might be envisaged as being able to be interpreted broadly, without reference to any corporeal embodi- ment. It is submitted however that to do so would be to go beyond a reasonable interpretation of the statement.143

In any event, Burger CJ did acknowledge that some things remained non-patentable, namely “laws of nature, physical phenomena, and abstract ideas”.144_{According to his Honour, a micro-}

organism was “not to a hitherto unknown natural phenomenon, but to a non-naturally occur- ring manufacture or composition of matter – a product of human ingenuity.”145

Diamond v Diehr

Diehr146was the final word of the US Supreme Court on the issue of software patenting un- til very recently.147 _{The invention inDiehrwas a process for moulding and curing rubber in}

which a computer iteratively applied a well-known equation to determine the optimum time at which to remove the rubber from the molding press. The constant application of the equation improved the process by taking into account the fluctuating temperature of the rubber inside the mold.

The decision inDiehrchanged the focus of the inquiry yet again. Rather than focusing on the importance of the algorithm to the claimed invention, the Supreme Court stressed the impor- tance of the industrial nature of the claimed process – something traditionally within the limits of patentability:

[W]hen a claim containing a mathematical formula implements or applies that for- mula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (for example, transform- ing or reducing an article to a different state or thing), then the claim satisfies the requirements of [patentability].148

The majority rejected the ‘point of novelty’ approach ofFlook, claiming that “[i]t is inappropri- ate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.”149_{Thus, the “question . . . of whether a particular invention is novel}

is wholly apart from whether the invention falls into a category of statutory subject matter”.150 142 _{See below.}

143 _{SeeBilski v Kappos130 S. Ct. 3218 (2010) at 3237 per Stevens J.} 144 _{Diamond v Chakrabarty447 U.S. 303 (1980) at 309.}

145 _{Diamond v Chakrabarty447 U.S. 303 (1980) at 309.} 146 _{Diamond v Diehr450 US 175 (1981).}

147 _{The Supreme Court did not address the issue again for nearly 20 years, until the decision inBilski v Kappos130 S.} Ct. 3218 (2010), which is discussed in detail below.

148 _{Diamond v Diehr450 US 175 (1981) at 192.} 149 _{Diamond v Diehr450 US 175 (1981) at 188.} 150 _{Diamond v Diehr450 US 175 (1981) at 190.}

Chapter 3: How Software Became Patentable

Despite the different focus, the majority clearly reaffirmed that mathematical inventions were outside the limits of patentability, drawing a distinction between an non-patentable discovery of a mathematical equation on the one hand, and its “application” on the other.151

Diehrhas subsequently been treated as opening the door to the patenting of software. However, “the Diehr decision was regarded as a very limited one for many years. It is limited in that it affirms only that patents can issue for traditionally patentable industrial processes which include a computer program as an element.”152_{In other words, the decision wasnotregarded}

at the time at which it was decided, as consistent with the patenting of “pure” software. Such a view also takes account of the strong dissent delivered by a 4-member minority, in which they attacked the improper characterisation of the invention by the majority, rightly pointing out that “[t]he starting point in the proper adjudication of patent litigation is an understanding of what the inventor claims to have discovered”.153_{The difference in characterisation between}

the minority and majority is outlined by Stevens J as follows:

As the Court reads the claims in the Diehrand Luttonpatent application, the in- ventors’ discovery is a method of constantly measuring the actual temperature in- side a rubber molding press. As I read the claims, their discovery is an improved method of calculating the time that the mold should remain closed during the cur- ing process. If the Courts reading of the claims were correct, I would agree that they disclose patentable subject matter. On the other hand, if the Court accepted my reading, I feel confident that the case would be decided differently.154

The minority characterisation is consistent with the ‘point of novelty’ approach taken inFlook. In fact, as Stevens J points out, there is a great deal of similarity between theDiehrandFlook

claims in that “[t]he essence of the claimed discovery in both cases was an algorithm that could be programmed on a digital computer.”155

The minority judgement includes a frank admission about the difficulties of determining the issue of computer program patentability:

The broad question of whether computer programs should be given patent protec- tion involves policy considerations that this Court is not authorized to address . . . As the numerous briefs amicus curiae filed in [Benson, Flook, Dann v Johnston] and this case demonstrate, that question is not only difficult and important, but appar- ently also one that may be affected by institutional bias. In each of those cases, the spokesmen for the organized patent bar have uniformly favored patentability and industry representatives have taken positions properly motivated by their economic self-interest. Notwithstanding fervent argument that patent protection is essential

151 _{“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or} process may well be deserving of patent protection.Diamond v Diehr450 US 175 (1981) at 187.

152 _{Pamela Samuelson, “Benson Revisited: The Case Against Patent Protection for Algorithms and Other Computer} Program-Related Inventions,” (1990) 39Emory Law Journal1025 at 1029.

153 _{Diamond v Diehr450 US 175 (1981) at 193-194.}

154 _{Diamond v Diehr450 US 175 (1981) at 206-207. (footnotes omitted)} 155 _{Diamond v Diehr450 US 175 (1981) at 209.}

How software became patentable subject matter

for the growth of the software industry, commentators have noted that ‘this indus- try is growing by leaps and bounds without it.’ In addition, even some commen- tators who believe that legal protection for computer programs is desirable have expressed doubts that the present patent system can provide the needed protec- tion.156

In re Abele

Eventually the Federal Circuit inAbele157_{took a view ofDiehrwhich opened the door to the}

unfettered patentability of software. InAbele, whilst discussing a claimed “improvement in computed tomography”,158_{the court modified theWalterrestatement of the second limb of the}

Freemantest as follows:

Waltershould be read as requiring no more than that the algorithm be ‘applied in any manner to physical elements or process steps,’ provided that its application is circumscribed by more than a field of use limitation or non-essential post-solution activity. Thus if the claim would be ‘otherwise statutory’ albeit less useful without the algorithm, the claim likewise presents statutory subject matter when the algo- rithm is included.159

This restatement effectively sought to modify the Freeman-Walter test in line with the princi- ples set out inDiehr. The resultingFreeman-Walter-Abeletest was adopted by the Australian Patent Office in 1986160_{and continued to be the test for the patentability of software up until it}

was rejected by Burchett J inIBM.161

FollowingIn re Abele, the Freeman-Walter-Abele (FWA) test required the following approach to determining patentability:

1. Determine whether the claim recites an algorithm within the meaning ofBenson.

2. Determine whether the algorithm is applied in any manner to physical elements or pro- cess steps. If it is, then it is patentable subject matter.

Alappat

InAlappat,162_{the Court in considering the patentability of “means for creating a smooth wave-}

form display in a digital oscilloscope”,163 _{abandoned the FWA test in favour of a “whole in-}

vention” approach. On such an approach, the FWA test was redundant, since “even in those

156 _{Diamond v Diehr450 US 175 (1981) at 216-217.} 157 _{In re Abele684 F.2d 902 (1982).}

158 _{In re Abele684 F.2d 902 (1982) at 903.} 159 _{In re Abele684 F.2d 902 (1982) at 907.}

160 _{Australian Patent Office,Guidelines for Considering the Patentability of Computer Program Related Inventions} (Canberra, March 1986).

161 _{IBM v Commissioner of Patents(1991) 33 FCR 218, discussed at 3 on page 121below.} 162 _{In re Alappat33 F.3d 1526 (1994).}

Chapter 3: How Software Became Patentable

cases wherein courts have applied a variant of the two-part analysis of [FreemanandWalter], the ultimate issue always has been whether the claim as a whole is drawn to statutory subject matter.”164_{As such,}

the proper inquiry in dealing with the so called mathematical subject matter ex- ception to § 101 alleged herein is to see whether the claimed subject matter as a whole is a disembodied mathematical concept, whether categorized as a mathemat- ical formula, mathematical equation, mathematical algorithm, or the like, which in essence represents nothing more than a “law of nature,” “natural phenomenon,” or “abstract idea.” If so,Diehrprecludes the patenting of that subject matter.

Applying this approach to the invention at hand, the Court held that “[this was] not a disem- bodied mathematical concept which may be characterized as an ‘abstract idea,’ but rather a specific machine to produce auseful, concrete, and tangible result.”165 _{The Court also relied on}

its earlier line of reasoning fromMusgraveandBernhart“that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software”.166 _{As such, “a computer, like a rasterizer, is apparatus not mathematics”.}167 _Such

a result was in the Court’s view consistent with the fact that “[t]he Supreme Court has never held that a programmed computer may never be entitled to patent protection”.168

State Street

The Federal Circuit Court of Appeal inState Street,169 _{a decision authored by Rich J, reversed}

the District Court’s rejection of a claim for a “Data Processing System for Hub and Spoke Fi- nancial Services Configuration”,170_{or more specifically “a system that allows an administrator}

to monitor and record the financial information flow and make all calculations necessary for maintaining a partner fund financial services configuration.”171

The case illustrates the importance of characterisation to the subject matter inquiry. The District Court, who had granted summary judgment on the basis of improper subject matter, looked past the way in which the system had been drafted as apparatus claims, noting:

[i]n all instances, this critical question must be answered: ‘What did applicants in- vent?’” Grams, 888 F.2d at 839 (quoting Abele, 684 F.2d 902, 907). At bottom, the invention is an accounting system for a certain type of financial investment vehicle claimed as means for performing a series of mathematical functions. Quite simply,

164 _{In re Alappat33 F.3d 1526 (1994) at 1544, footnote 21.}

165 _{In re Alappat33 F.3d 1526 (Fed Cir, 1994) at 1544 (emphasis added).} 166 _{In re Alappat33 F.3d 1526 (1994) at 1545.}

167 _{In re Alappat33 F.3d 1526 (1994) at 1545.} 168 _{In re Alappat33 F.3d 1526 (1994) at 1545.}

169 _{State Street Bank & Trust Co v Signature Financial Group Inc149 F.3d 1368 (1998).} 170 _{State Street Bank & Trust Co v Signature Financial Group Inc(1998) 149 F.3d 1368 at 1370.} 171 _{State Street Bank & Trust Co v Signature Financial Group Inc149 F.3d 1368 (1998) at 1371.}

How software became patentable subject matter

it involves no further physical transformation or reduction than inputting numbers, calculating numbers, outputting numbers, and storing numbers.172

Such a system obviously ran afoul of the “mathematical algorithm exception”173_{as set out in}

Benson. Similarly, the District Court held that “[p]atenting an accounting system necessary to carry on a certain type of business is tantamount to a patent on the business itself. Such abstract ideas are not patentable, either as methods of doing business or as mathematical algo- rithms.”174

The Federal Circuit however noted that the original application contained six process claims and six machine claims, the former being cancelled when the examiner “contemplated a [sub- ject matter] rejection”. As such, the Court “looked no further than the applicant’s apparatus claim and determined that the subject matter was a machine, and therefore, statutory”.175 _In

order to demonstrate that fact, Rich J took the unusual step of rewriting the claims to emphasize the computer hardware by which the method would be performed.176

In relation to the mathematics exception, the Court held that the FWA test was rendered nu- gatory by the more expansive approach to inherent patentability found inDiehr,Chakrabarty

andAlappat.177 _{Rich J noted that “[u]npatentable mathematical algorithms are identifiable by}

showing that they are merely abstract ideas constituting disembodied concepts or truths that are not ‘useful’.”178_{However, this would not be so where the subject matter was “reduced to}

some type of practical application, i.e., ‘a useful, concrete and tangible result’.”179_{As such, the}

presently claimed invention was patentable subject matter since

the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces “a useful, concrete and tangible result”– a final share price momentarily fixed for recording and reporting purposes. . . 180

This was a step forward over the previous requirement inAlappatthat the data being trans- formed represents a measurable physical phenomenon.

Rich J also “forcibly wiped out”181_{the business method exception:}

We take this opportunity to lay this ill-conceived exception to rest. Since its in- ception, the “business method”exception has merely represented the application of some general, but no longer applicable legal principle, perhaps arising out of the

172 _{State Street Bank & Trust Co v Signature Financial Group Inc927 F. Supp. 502 (D Mass, 1996) at 515.} 173 _{State Street Bank & Trust Co v Signature Financial Group Inc149 F.3d 1368 (1998) at 1372.}

174 _{State Street Bank & Trust Co v Signature Financial Group Inc927 F. Supp. 502 (D Mass, 1996) at 516.} 175 _{Gregory Stobbs,Software Patents(2}nd_{ed, Aspen, 2000) at 183-184.}

176 _{State Street Bank & Trust Co v Signature Financial Group Inc149 F.3d 1368 (1998) at 1371-1372.} 177 _{SeeState Street Bank & Trust Co v Signature Financial Group Inc(1998) at 1373-1374.}

178 _{State Street Bank & Trust Co v Signature Financial Group Inc(1998) at 1373.}

179 _{State Street Bank & Trust Co v Signature Financial Group Inc149 F.3d 1368 (1998) at 1373.} 180 _{State Street Bank & Trust Co v Signature Financial Group Inc149 F.3d 1368 (1998) at 1373.} 181 _{Gregory Stobbs,Software Patents(2}nd_{ed, Aspen, 2000) at 184.}

Chapter 3: How Software Became Patentable

“requirement for invention”– which was eliminated by §103. Since the 1952 Patent Act, business methods have been, and should have been, subject to the same legal requirements for patentability as applied to any other process or method.182

As to whether business methods were generally non-patentable as “abstract ideas” as sug- gested by the District Court, his Honour remained silent.

Ex parte Lundgren

In the wake ofState Street, it was thought that so-called “pure” business methods183_{were still}

non-patentable, with all business method inventions being thought to require a technological basis.184 _{This requirement was eventually removed by the USPTO Board of Appeals inEx parte}

Lundgren.185

In that case, the BPAI considered the patentability of claims to “a method of compensating a manager . . . of a privately owned primary firm for the purpose of reducing . . . incentives for industry collusion”.186 _{The examiner had rejected the claims on the basis that “the inven-}

tion and the practical application to which it is directed [are] outside the technological arts, namely an economic theory expressed as a mathematical algorithm without the disclosure or suggestion of computer, automated means, [or] apparatus of any kind”.187 _{The examiner had}

however withdrawn a rejection on the basis that the claims “failed to produce a useful, con- crete and tangible result”,188 _{from which the Board inferred that thisState Streetrequirement}

had been fulfilled.

A majority of the Board held that despite what was said inMusgrave, “there is currently no judicially recognized ‘technological arts’ test to determine patent eligible subject matter under § 101. We decline to create one. Therefore, it is apparent that the examiner’s rejection can not be sustained.”189

Judge Barrett agreed with the majority that no separate “technological arts” requirement ex- isted,190but disagreed with the apparent inference from the judgment that any “claim to a se- ries of steps” was a patentable process.191 _{Instead after a lengthy analysis of the historical basis}

of the patentable subject matter inquiry, he concluded that “all cases where statutory subject matter was found can be explained”192_{by defining process to require:}

182 _{State Street Bank & Trust Co v Signature Financial Group Inc149 F.3d 1368 (1998) at 1375.}

183 _{Those business methods claimed in the absence of a technological means, such as a computer, to carry them out.} 184 _{Ex parte Bowman61 USPQ 1669 (2001). The origin of such a requirement can be foundIn re Musgrave57 CCPA}

1352 (1970);In re Toma575 F.2d 872 (1978).

185 _{Ex parte LundgrenAppeal No 2003-2088 (BPAI, 2005).} 186 _{Ex parte LundgrenAppeal No 2003-2088 (BPAI, 2005) at 1.}

187 _{Ex parte LundgrenAppeal No 2003-2088 (BPAI, 2005) at 4, citing the examiner, Paper No 60, page 7.} 188 _{Ex parte LundgrenAppeal No 2003-2088 (BPAI, 2005) at 5, citing the examiner, Paper No 60.} 189 _{Ex parte LundgrenAppeal No 2003-2088 (BPAI, 2005) at 9.}

190 _{Ex parte LundgrenAppeal No 2003-2088 (BPAI, 2005) at 16.} 191 _{Ex parte LundgrenAppeal No 2003-2088 (BPAI, 2005) at 16.} 192 _{Ex parte LundgrenAppeal No 2003-2088 (BPAI, 2005) at 87.}

How software became patentable subject matter

a transformation of physical subject matter to a different state or thing. . . . [T]he subject matter transformed can be tangible or intangible, which I interpret to be mat- ter or some form of energy to be consistent with the definition of “technology.”193

Judge Smith dissented, holding that the phrase “technological arts . . . as used by the examiner is intended to represent a more modern term for the reference to ‘useful arts’ in the Constitu- tion”,194_{which limited the legislative power of Congress and hence the scope of patent law. As}

such “any laws passed by the Congress to grant patents should be applied in a manner that is consistent with the constitutional mandate”.195 _{Judge Smith was critical of the breadth of the}

majority’s holding noting that:

processes represent an especially troublesome type of invention. This is because al- most anything can be claimed as a series of steps that technically can be considered a process, but the term process is so broad that it can be used to claim inventions

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