Battle Between Software Patents and Open Source

white-house-04-10-2012-2It has already come to light that President Obama is interested in moving the United States federal government away from proprietary software to open source solutions.  I am not sure this ought to a top priority that is so important that it is on his mind during his first 48 hours in Office, but it is apparently ahead of a lot of things.  Personally, I would rather him try and use his vast fund raising abilities to raise the $1 trillion necessary to bailout the economy, but what do I know?  I am just a patent attorney who thinks software ought to be patentable and that the Federal Circuit went way farther than it should have in Bilski.  But I can’t help but notice that by making open source software a priority President Obama is potentially showing his hand and throwing in with those who would rather not see a strong and vibrant patent system.  Perhaps I am reading to much into this and far to anxious about who he might appoint to be the next Director of the USPTO.  Call me a worry wart if you will, but I don’t like where this might head.  It is bad news for the software industry as we know it, and if he has these opinions on software what will his opinions on pharmaceuticals be?

A little more than 21 months ago the United States Supreme Court issued its decision in Microsoft v. AT&T, but not much has been written about this decision, at least not when you compare it with the amount that has been written about the other patent decision that was issued the same day by the Supreme Court, namely the obviousness decision in KSR v. Teleflex.  The lack of coverage for the Microsoft/AT&T case is no doubt at least in part due to the fact that KSR v. Teleflex was so highly anticipated, and completely jumbled the law on obviousness to a point where you cannot get a patent on an invention if you actually thought the invention would work.  Luckily the USPTO and the courts have not really followed all of what the Supreme Court said in KSR, but there is always that fear. It could also be said that the Microsoft/AT&T decision is of much less importance because it likely has relevance only in a segment of the technology industry. Of course, another reason may be because no one knows exactly what to make of the decision, thanks in no small part to a number of rather strange statements by the court.

The holding reached by the Supreme Court in the Microsoft-AT&T case is not terribly difficult to articulate. The Supreme Court determined that Microsoft was not liable for patent infringement under 35 USC § 271(f) because the version of Windows that was actually installed on certain foreign-based computers was not exported by Microsoft. While the holding is not terribly difficult to articulate, the strange and contorted logic employed by the Supreme Court does make it a real challenge to figure out what the Court was thinking.  Nevertheless, I trace back the fall of proprietary software and the beginning of the end of software patents to the day the Supreme Court issued its decision in the Microsoft-AT&T case.


One curious aspect of the Microsoft-AT&T decision was the choice by the majority to characterize software that is not in a format capable of being immediately loaded onto a computer as “an idea without physical embodiment.” This cavalier observation is, of course, ridiculous.  It is also proof why the Supreme Court ought to have nothing to say about patents or patent related issues.  On top of that, if Justice Scalia really thinks patents are gobbledygook, like he actually said from the bench during the KSR oral arguments, then he ought to recuse himself from any patent cases that make their way to the court because he has emphatically stated that he just doesn’t understand patents or the issues.  We don’t need any judges deciding cases when they clearly don’t get it, particularly when they have admitted they don’t get it to a national audience.

Of course the statement that software is an idea was dicta, and not binding on future courts.  Notwithstanding, the comment did not seem to be ancillary, but rather an ill conceived, legally incorrect over simplification. If software is just “an idea” then it could certainly not be copyrighted and it certainly could not be patented, which will come as music to the ears of anti-software advocates around the globe, thereby only making it even harder to achieve widespread acceptance of intellectual property protection for software.  Perhaps that was the idea all along.

Software is a tool and tools have always been patentable.  The fact that the Supreme Court and others do not understand what software is or does ought not to be a reason to prevent proprietary protections.  Speech recognition software, for example, is not only a tool, but a necessity for many individuals. There are many individuals who would not be able to enjoy even basic use of a computer absent speech recognition software. If the goal of the patent system is to grant limited exclusive rights in exchange for knowledge, information and inventions that will assist man, then why not allow for patentability of software?  I know there are a lot of bad software patents, but why kill the entire industry when all you need to do is actually meaningfully apply the law to weed out those patent applications that define true innovation from those that are nothing more than window dressing?

The real problem with software patents, and the reason so many want to embrace open source, is that software causes a machine to operates in a certain way; but not just any machine, the machine that we all rely on every day – the computer.  The arguments of the protesters and anti-software patent advocates seems to be that software is far too important be patented, far too fundamental to daily life to deserve exclusive protection. But if that is the foundational starting point for the debate, then how is it possible to justify any patent at all? With this rationale it would seem that the more foundational and important an invention the less deserving of patent protection. This is not to say that software is as important as a cure for cancer or an AIDS vaccine, but not allowing patents simply because too many people would have to pay royalties seems virtually certain to lead to a patent system that rewards those who inch forward rather than those who leap.

Many who object to software patents would rather see the entire patent system disappear.  I never thought that was a real risk, until lately.  With the direction the Supreme Court is heading, the fact that Congress cannot do anything on the issue of patent reform, and the fact that President Obama is investigating open source solutions makes me very worried about the future.  Add that to the fact that all of our leaders seem to be abandoning the capitalistic model that has prevailed in the US since the beginning, and I worry that the US patent system might be a little to tied to capitalism to survive the current onslaught.

I hope I am overreacting.  I really really do!


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Join the Discussion

11 comments so far.

  • [Avatar for Adam Fitton]
    Adam Fitton
    October 6, 2009 12:20 am


    As for the Bias thing I agree everyone is biased. I’m in IT, your a patent attorney. I even think the FSF idealogical pursuit is way too far and I’m an open source advocate.

    You said that you were a critic of the patent office. I couldn’t agree more.

    And you are right, we do see problems with the patent system regarding patents and our end results are different. I see removing software patents as a potential solution, that although will not lead to the best result, it will lead to a better result than what we have now.

    I’m sure you have thought up your own solution.

    Thank you for this nice little discussion, it has been very interesting.

    Kind Regards,
    Adam Fitton

  • [Avatar for Gene Quinn]
    Gene Quinn
    October 5, 2009 11:41 am


    You severely understate the problem when you say at the end it is inefficient. I agree completely, and I agree at least in principle with a system that rewards research based on resources expended and effort. Unfortunately, to get to a “truly just” system it would need to be a sliding scale that could be manipulated and create its own inefficiencies to implement. I am afraid we are stuck with some kind of a mechanical system, but how do we make that better?

    It seems that we do not disagree all that much, expect perhaps in the end result. It seems we see the same problems, perhaps from different angles. What I see is large companies getting patents issued in the business method and software space at lightening speed, and where there is no true innovation. I see small companies not getting patents or being delayed for many years. That is a huge problem. I am not willing to jump to conspiracy, but the unequal treatment does make me scratch my head and wonder.

    Software patents do create difficulties for everyone, but I don’t see that as a justification for doing away with software patents altogether. This is what the patent system is intended to do on at least some level, and intentionally. Through disruptive forces that should (and usually does in many technical areas) force people to innovate to the next generation. Does that happen in software? I don’t know, that is a good question. It is hard to know because in the software space there are so few major players and they are so enormous that monopoly and oligopoly skewing of the system is probably far more important a consideration than the impact patents have. Patents can be the great equalizer for small businesses, and I am 99.99% sure that is the major reason the same oligopoly tech giants want weaker patent rights; namely so that their dominance cannot be challenged by small businesses.

    As far as your last comment in your previous comment, you are probably right on some level. I am biased. There is nothing wrong with bias as long as it is recognized. We all have it, we all see the world from our own unique point of view. I do, however, have trouble hearing from folks who are obviously biased themselves that I am biased. I also have trouble hearing that I am a defender of the patent system status quo. Nothing could be further from the truth, and in fact I have been perhaps the most vocal critic of the patent system and the Patent Office over the last several years. The system is broken, it doesn’t work and needs to be fixed. I just want it to be fixed so it is an improvement and I think fixes that solidify the monopoly/oligopoly of large corporations that do not innovate is a big mistake and completely against the Constitutional directive to foster innovation.



  • [Avatar for Adam Fitton]
    Adam Fitton
    October 5, 2009 06:10 am


    Firstly thank you for your civil response. Given my last paragraph was slightly untactful I appreciate your respectful response.

    In answering your question about duration… simply changing the duration of patents will not solve the bigger issue. Essentially what is needed is a system that rewards research based on the amount of resources put into the research and therefore patents should represent a varying amount of value. But of course the policy and legislation would be hell to manage this. So in reducing the length of software patents would reduce some of the issues but would only be a band aid solution, and in some cases reduce the potential benefits of a well deserving patent.

    As for the mega company ripping off the small company, I agree this is a major concern. In my view it is this and research that is the main driving force behind an effective patent system. But in my experience I have seen that it is often the smaller players that are being excluded from competing even though they can offer a superior service or product, this is often due to the benefits of strategically locking out opponents and thereby achieving more power not just in the patented market but also in related markets.

    I feel the patent system use of covering software is clearly outdated as it prevents anyone from building on what has been patented. I touched on this in the orchestra metaphor. This is often due to the way software works. A car that infringes on a patent can easily have the part that infringes removed and replaced with something that serves the same purpose. But in software, that often uses a layered architecture, its not as simple as ripping out the offending part. Also given the numerous ways that software can interact and the enormous amount of software patents out there, it becomes a legal mine field of what you are legally allowed to do.

    To be perfectly honest, I am not 100% sure on where to stand on this issue. I have seen patents allow for great innovations in many industries. But in the computing industry I have just seen problem after problem. I have difficulty seeing how an industry with such high amounts of cheap innovation needs software patents and I see both mega companies and small businesses struggle in dealing with patents. It just seems inefficient to me.

  • [Avatar for Gene Quinn]
    Gene Quinn
    October 4, 2009 10:12 am


    I respect your opinion. You set forth the best argument against software patents.

    Would you be in favor of software patents (or at least less troubled) if the duration were dramatically less?

    If we were to do away with software patents it seems to me that we would essentially be putting a stamp of approval on the mega-companies who have built their business on software patents, thereby making it impossible for smaller businesses who truly innovate to compete. How would you address the disparate size between mega-company who does not innovate and could simply rip off small innovate companies, thereby killing them? In my view software patents are the great equalizer and are necessary for small businesses because they will be destroyed by giant companies that do not innovate but have the means and ability to maintain their monopoly.


  • [Avatar for Adam Fitton]
    Adam Fitton
    October 4, 2009 04:45 am

    The author of this article stated that “anti-software patent advocates seems to be that software is far too important be patented, far too fundamental to daily life to deserve exclusive protection” as the key point.

    This is clearly a strawman approach to the issue.

    In my experience I view the argument against software patents to be based around the fact that innovation in the ICT space does not require patents due to low barriers of entry and that software patents are used strategically to prevent competition rather than promote R&D.

    Also there are arguments relating to how software patents are an inherently abstract entity. Copyright exists to fill this role, but I believe that if software patents were to be extended as the basis for the extensibility of all patents that it would be possible to patent the use of a two violins and a flute and then taking legal action when a orchestra uses three violins and flute.

    Also, given your position as an US Patent Attorney, I think you are about as biased as they come, and equal in bias to the Free Software Foundation…. no offense.

  • [Avatar for abaccus]
    February 13, 2009 01:07 pm

    @Step Back

    “Software Patent” is an oxymoron, but not for the reason you mention:

    Software is speech, I don’t see any difference with any text published in a newspaper. And as such, it is protected by the First Amendment of the US constitution.

    BTW, be sure that if Bilski goes to the Supreme Court, I will send them a letter remembering that the First Amendment is the corner stone of American freedom and liberties, and that the Government should not intervene in the censorship of pieces of text, such as software source code.

    On the hardware vs software issue, any person skilled in the art will tell you there is no problem identifying what is made in software and what is made in hardware.

  • [Avatar for Gene Quinn]
    Gene Quinn
    January 24, 2009 02:53 pm

    I just posted the first in what will be a series on the history of software patents. Hopefully it will provide some background into the evolution of the law.




  • [Avatar for Gene Quinn]
    Gene Quinn
    January 24, 2009 11:15 am

    Step Back-

    At first I must admit that I thought you were a crackpot, but it does seem clear to me that you are not at all a crackpot and you do really understand the issues. I will say that I think why folks dismiss you is because you lead off with “what is software”? I suspect that most in the industry just stop listening to you at that point. This is undoubtedly unfair, but there are so many people out there who just don’t want software to be patented and they take ridiculous positions. There is no reasoning with them because they think they know the law, even though they clearly do not.

    After reading what you wrote above it is clear you get the situation far better than you probably expect you do. The straight answer is that I don’t have any answer for you, and no attorney can in good faith provide an answer because since the Supreme Court in Gottschalk v. Benson first discussed software the target has continued to move. They loosened the absolute no stance in Diamond v. Diehr, and then over time the Federal Circuit continued to loosen. We all know what software is in life, but since the 1970s in order to protect software with patents attorneys and applicants have had to go through a variety of strange and contrived formats to claim software. That is why I railed on Bilski so much. We had finally gotten to a point in the law where we could actually define software as what it is… a set of instructions that directs a machine to perform specified functionality. Now the Federal Circuit is pushing things under ground again and forcing us to describe software as a machine, which is intellectually dishonest.

    So the best answer anyone can give you about what is a software patent is that you have to look at the application and figure out what the point of novelty is. If machine language is used, or means plus function language is used, but the literal claim language would cover what we all know and call software, then the invention is said to related to a computer related process, aka software.


  • [Avatar for step back]
    step back
    January 24, 2009 10:47 am

    “Bilski did deal with software. It really ought to have only dealt with a pure business method”

    “Of course there are software patents and the fact that a preamble of a claim doesn’t use the word “software” doesn’t mean that the claims and the patents are not related to software.”

    Dear Gene,

    With due respect, I similarly have no idea what you’re talking about and I’m not trying to be facetious here (honestly).

    I have yet to see a clear bright line and practical test for what “software” is is, or what “business” is is, or what a “pure” business method is as opposed to an impure business method or a non-business method. Every time I ask, people refuse to answer and simply laugh the question away (sort of like saying, ‘Oh you silly rabbit, of course the Emperor has clothes’ … No he doesn’t. See for example: ) ((BTW does the WordPress comment field allow for HTML code and if so which ones? Is xyz OK? The “Leave Comment” option provides no guidance.))

    You inform me that: “You see, software is a process …” Rather than clearing the waters, that muddies them for me. Does it imply that a pure “software” patent must consist of only method claims? Does it mean that State Street was not a software case because the adjudicated claim was a machine (apparatus) claim rather than a method claim? Does it mean that In re Beauregard was not a software case because the disputed claim was for an article of manufacture? Was Diamond v. Diehr a “software” case? What if the timing signal for opening the rubber curing mold comes from an analog circuit or from digital firmware (i.e. an FPGA)? Does such a variation take an accused infringer outside the ambit of Diehr’s software claims (assuming you take the position they are “software” claims as opposed to simply a method claim that recites computation per the the Ahrenius equation plus the step of opening the mold in response as a post-computational act)?

    Now of course, I could rant on and on here about muddied waters. But I think first; to have meaningful discussion, we must have a clear definition of what makes something “software” and what makes a patent a “software patent” as opposed to some other kind of patent. Is a patent that claims a programmed FPGA, a software patent? Is a patent that claims a programmably tunable analog circuit, a software patent? I am honestly quite confused when people start pontificating about “software patents”. What exactly are they even talking about?

    BTW, I am not oblivious to the implications of Bilski because even before Bilski came down, I was already getting 101 rejections based on the USPTO’s Love memo for cases that were clearly not for “software”. Every method claim is under attack. The USPTO is making arbitrary and capricious requirements for how method claims should be written without providing any basis in statutory law or promulgated administrative rule. The problem goes far deeper and beyond Bilski. The problem goes to unquestioning acquiescence by way too many people in this country to authoritarian dictates (i.e. the USPTO Love memo).

    “Also, are you trying to say that since I am an attorney I should not have an opinion and voice that opinion? ” –Of course not. This is America. You can have lot’s of opinions, even self-contradicting ones that use undefined and undefinable words and phrases (i.e. “software patent”).


  • [Avatar for Gene Quinn]
    Gene Quinn
    January 24, 2009 01:56 am

    Step Back-

    I really have no idea what you are talking about. I shouldn’t jump into the pit? There are no such thing as software patents? Of course there are software patents and the fact that a preamble of a claim doesn’t use the word “software” doesn’t mean that the claims and the patents are not related to software. Also, are you trying to say that since I am an attorney I should not have an opinion and voice that opinion?

    Additionally, Bilski did deal with software. It really ought to have only dealt with a pure business method, but the Federal Circuit went much farther than necessary and certainly issued an opinion related to software. You see, software is a process and the Bilski case says that such processes must be tied to a computer. This is exactly how software was protected prior to State Street, so when the Federal Circuit resurrects this thinking it has tremendous implications for software and software patents. I recommend that you review the genesis of software protection in case law and you will then quite clearly see exactly why Bilski has enormous impact for software patents.

  • [Avatar for step back]
    step back
    January 24, 2009 12:14 am

    “I am just a patent attorney who thinks software ought to be patentable”

    Dear Gene,

    An an attorney, you should not be voluntarily jumping into the “software patents” pit and then trying to heroically dig yourself out.

    Why not start by refusing to step into the pit in the first place?
    What is a “software” patent and where does such an animal actually get asserted?
    I have yet to see a claim written as follows:

    What is claimed is: 1. Software comprising:
    a first abstract idea about causing a computer to perform a first computerized step;
    a second abstract idea about causing the computer to perform a second computerized step; and
    a third abstract idea about causing the computer to perform a third computerized step.

    In re Bilski was not about software at all.

    IIRC, the claim required a first physical step of initiating first transactions between real people and a second physical step of initiating second transactions between real people (a.k.a. compositions of matter). The Bilski majority refused to look at the actual words of the claim and to construe them in accordance with standard claim construction procedure. If they had done so, they could not with a straight face have asserted that initiating first transactions and initiating second transactions are physical steps that alter compositions of matter rather than abstract ideas or laws of nature. Yes, Bilski is indefensible. But so is jumping into a framing abyss by acquiescing to the idea that there is something called a “software patent” and that, just like the case with pornography, we all know it when we see it.