Executable mathematics renders inventions physical! Welcome to the digital age

We accordingly “held that simply implementing a mathematical principle on a physical machine, namely a computer, [i]s not a patentable application of that princi­ple.” (Alice v. CLS Bank).

An apparatus that generates the signal is of course a machine.  (In re Nuijten)


digital-globe-handIn a previous IPWatchdog article I have argued that a programmed computer is a machine, not an abstract idea.  What about computers performing mathematical formulas?  Do these computers not act merely as calculators in those cases, and does SCOTUS not actually have a point there?

The use of a mathematical formula in a claim can trigger a 35 USC 101 rejection or invalidation of the patented claim.  However, the role of mathematics in physics and in inventions has changed dramatically over the last 50 years.  To many legal professionals mathematics merely consists of formulas, with no further distinction.  Fortunately, many USPTO Examiners are well trained in technology and often appropriately allow mathematically modeled inventions.

An issued patent claim with a mathematical formula remains subject to potential invalidation, certainly after Alice. The fundamental issue of the digital age is that mathematical formulas are now an essential part of devices in the digital economy.  These formulas are part of executable structures that establish a physical device. Thus, the interpretation of mathematical formulas as an abstract description of reality is an outdated leftover of the industrial revolution that itself struggled with the epistemological significance of mathematics.  The history of science is full of examples of doubt about the “existence” of concepts that were expressed in mathematical form.  And to many people, even of academic education, mathematics and its relation to science and engineering remains somewhat opaque, to say the least.

The Courts are correct about computers, at least in part, sometimes being mere calculating machines.  That is, one can feed almost any expression into a computer and provide or initiate data and generate an outcome that can be displayed on a screen.  One may call that a conventional use of a computer.  I would not call it an abstract idea, but more like an obvious and limited use of a computer.

However, physical reality has fundamentally changed with the use of computers. In many cases the physical reality nowadays is determined by a mathematical model implemented on a computer and making the programmed computer the actual physical functional device that replaces another physical device or does something “physical” that is otherwise not possible.

In a narrow sense, the origin of this physical transformation of data lies in the Shannon sampling theorem and the Nyquist rate criterion, which show that any analog signal is fully characterized by a limited number of discrete samples of the signal under certain conditions.  This enables the quantification of the physical world.  By digitizing the discrete samples, for instance in binary words which each represents a number, a physical model is now merely a set of discrete operations on numbers.  (Actually, there are no numbers in a computer, which are abstract ideas, but there are signals or material states which can be represented by numbers.)

These numbers/signals can be converted back into a physical analog signal by using a device like a digital/analog (D/A) converter.  Computers are programmed to operate on the numbers to perform a defined task, such as filtering or demodulation, by performing calculations in a certain order and at a certain speed.  Cellphones, DVD players, telephone sets, 3D printers, cameras, MRI machines and the like are in essence computers with an A/D and D/A converter and/or transducers.

Take electronic filters as an example.  There actually are different types of math that describe the performance or behavior of a filter.  A first description is what is called a transfer function that illustrates the frequency behavior of a filter.  For instance a transfer function of a low-pass filter shows that for low signal frequencies there is limited or no attenuation of a signal and for high frequencies there is significant attenuation.  Unfortunately, the transfer function cannot be implemented as such to create a filter.  One may calculate what the attenuation of the filter is for a certain signal frequency, but the transfer function formula by itself does not filter a signal.  It is like E=mc2, a formula often recited in patent related discussions.  Calculation of a value of E for a certain input does not release the calculated energy.

There is another type of mathematics in electric filters, which applies time-delays, clock-signals, multiplications and additions of the earlier mentioned numbers (which are actually signal samples) that generates output numbers.  These output numbers, when processed by a digital/analog (D/A) converter, translate into signals that are filtered signals.

This provides the absolutely astonishing fact that the computer with its implemented mathematical model replaces an electrical filter that previously was built from wires, inductor coils, capacitors, op-amps and resistors, the ultra physical stuff.  There is no doubt that a digital filter is as real as any other electronic filter.  But …, the heart of the digital filter is a computer that basically performs calculations in accordance with a mathematical algorithm.  We can argue that the processor does something “significantly more”, namely the filtering.  But it changes nothing to the reality of the filter being implemented by basically a calculator.

One can make a similar analysis of medical images such as 3D MRI images.  These 3D images do not exist as such, but are merely sets of data.  They are only recognized as true images when they are displayed on a 2D output medium such as a computer screen by for instance rendering algorithms, which are calculators.  However, no one would characterize MRI machines as merely abstract ideas.  Other mathematical executable models exist, also outside pure electronics, such as in medicine, virtual reality, 3D printing, control systems and decision support.

This is the fundamental nature of the digital age.  Data and mathematical algorithms are no longer an abstract description of reality, but are the reality in this digital age.  Many people, including Congress and the Courts, seem to look at mathematics as a difficult to understand abstract language that has little to do with physical reality.  It is an old phenomenon from which the “practical men” in Britain already suffered when opposing Maxwell’s theory in the late 19th century.

This does not mean that USPTO Examiners are naive about computerized machines; many are clearly not.  But they are not receiving the legal guidance and support that corresponds with what many have learned in college.  It seems that a true understanding what computers actually do with mathematics is missing at the Courts and in Congress and that “applying math” by a computer is incorrectly believed to be “doing what only humans would do.”  Undeniable, this opinion fits well into the political and economic interests of some stakeholders and they do not actively dispute this outdated notion.  But the time of the computer being a mere calculator has gone for over more than five decades now.

It is perhaps a scary thought, but increasingly, if you can model something on a computer (which is an art in itself), it is reality. However, cases litigated in courts and before the PTAB show that the “abstract idea” allegation can be applied as a strong weapon against patent owners and in my mind denies the current state of technology and the economy. I believe that the courts, with some exceptions that jump out, are not well prepared for the above type of inventions and rely on outdated interpretations that force digital age inventions into the straight jacket of the industrial revolution of mechanical machines.  The requirement that the “abstract idea” has to do   “significantly more” seems arbitrary and relies on what a (non-expert) reviewer thinks is conventional or abstract. It is time for Congress to end this outdated and unscientific practice and bring the patent system into the 21st century on this aspect.

The computer executable mathematical model is at the core of the digital economy.  In a great number of inventions there is no longer a distinction between a mathematical principle and a physical principle, and because of the computer they are the same.

Thus the courts have it actually backwards.  Mathematics in the human mind is abstract, but a programmed computer enables the physical execution of a mathematical model and thus transforms the mathematical model into a physical device or machine. Modern control theory relies entirely on that approach.

I believe the current “abstract idea” standard to be outdated, detrimental to novel digital inventions and not supported by scientific facts in many cases. Congress should change it.


Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Join the Discussion

64 comments so far.

  • [Avatar for step back]
    step back
    May 8, 2016 12:25 pm

    Night at 62,

    It looks like Gene recently posted a piece on how the T-word predisposes judges and juries to dislike patent holders.

  • [Avatar for Night Writer]
    Night Writer
    May 4, 2016 08:30 pm

    step, I think it is all about Google wanting to control innovation. Google is without a doubt an ev1l company.

  • [Avatar for Night Writer]
    Night Writer
    May 4, 2016 08:28 pm

    I think the justices get their understanding of science from movies. Inventions are made in flashes of geniuses sitting by fires. Don’t forget Posner saying that engineers just naturally do these things and all they need is a pizza once in a while and no patents.

  • [Avatar for step back]
    step back
    May 3, 2016 12:39 pm

    Hi Night,

    The bit about finding 2nd year engineering students in a Silicon Valley coffee shop belongs to Justice Kennedy during the Alice oral arguments (which you can watch again via the below link).

    His notion is that there is something he can refer to as an “idea”.

    You enter the java hut. Look about till you spot a young person studiously engaged in a textbook entitled, Maxwell and His Electromagnetic Laws of Nature.

    You sit down across from her and say, Look I’ve got a hundred bucks and this simple “idea”. Will you do it for me over this weekend?

    Ten minutes later you have conveyed your “idea” to her (yes, surprise it’s a female 2nd year engineering student). She says, Sure. Your “idea” is a fundamental economic practice as old as King Tut and his abacus man. I fully understand it and will “code” it up on my “generic” laptop using a cool sounding coding language like C++ over this weekend.

    On Monday, you meet her again at the SV Java Hut. She hands you a flash stick. You give her the hundred bucks. It’s done. Simple as all that.

    And then you have the audacity to want a patent for your contribution, namely, the simple fundamental “idea”! How dare you insult Justice Kennedy’s intelligence.

    Justice Breyer is no fool either. He and Sherman often travel back in time (using Sherman’s Way-back Machine) to King Tut’s palace to watch the wise gent perform feats of fundamental economic practice with aid of his abacus man. You see? It’s too simple to deserve a patent.


  • [Avatar for Night Writer]
    Night Writer
    May 3, 2016 09:20 am

    “2nd year engineering students do on their weekends.” This one you have to love. So, ask yourself what inventions couldn’t be built over the weekend by a group of 2nd year engineering student given the resources. And the answer is not much. That should — to a rational mind–make one wonder if it isn’t the knowing how to do something that is the key and not the doing. You have to wonder the lives these egomaniac ignorant justices lead to not be confronted with this reality and to maintain a position that is indefensible to any rational person. The Sun revolves around the Earth.

  • [Avatar for step back]
    step back
    May 2, 2016 12:05 pm

    Night Writer asks at #58:

    Could it BE more crazy?

    I’ve heard it credited to Albert Einstein that as far as he knew there were only two things in the universe that could increase to infinity of beyond, compound interest and human stupidity; although he had doubts about the first one.

    Of course it could go more crazy.

    Unlike Einstein, I have confidence that SCOTUS will reveal in yet more stupendous ways their utter ignorance and fantastical thinkings in regards to science (i.e. fundamental building blocks thereof), laws “of nature”, generic computers, abstract ideologies and what 2nd year engineering students do on their weekends.

  • [Avatar for Night Writer]
    Night Writer
    May 1, 2016 04:13 pm

    @step back and Anon — it is unlikely that the judges and justices will reform, but the lowly likes of Ned and Lemley are not helping and it is not an excuse that the judges are off their rocker anyway. You know the lowly likes of Lemley and his functional claiming paper is shameful. Its cites are faulty and it intentionally misrepresents and does not disclose facts.

    I agree it is a new dark age. The age of celebrity. Just think how odd it is that celebrities with little or no education get on the shows and yap about how the world should work or what policies should be implemented. Crazy.

    And now the next president a reality t.v. star. Could it BE more crazy?

  • [Avatar for step back]
    step back
    May 1, 2016 10:29 am

    Anon @54,

    Unfortunately I must agree with you.

    We are at the dawn of a new Dark Age.

    The Supreme Leaders of the American mullah class (aka SCOTUS) are sending a clear message to the American inventor class:

    We don’t like you. We don’t like your tricky mere draftsmen lawyers. You are all a bunch of deceptive trolls trying to fool us by placing colored cellophane over a conventional speedometer. We’re too smart for that. We have read the briefs of them who are the true “friends” of the Court. We now understand your banana plucking ways. No more. From hence forth all inventions are abstract and therefore ineligible. By this edict we unleash the true and inevitable “innovation” as created by the trickle down marketplace and them who are too big to infringe while putting you trolls where you belong, back under the bridge.Long live the corporation. Long live our new Golden Age of “innovation”.

    (I wonder how long it will be before historians look back at these Trump card days and realize they were the dawn of the New Dark Age.)

  • [Avatar for step back]
    step back
    May 1, 2016 10:11 am

    Ternary @54 writes:

    The invention is not merely “a marker on a speedometer.” … In 2001 [ use of on-board GPS car-navigation] was a pretty clever invention

    Unlike you Ternary, I have not done all my homework, so I’m going out a bit on the proverbial weak tree limb …

    But I bet that if you study all the amici briefs, you’ll find one that heaps praise on the Justices (vanity be thou oh so vain) and convinces them they are too smart to be fooled by an invention that is no more than a color filter on a speedometer.

    The Justices love to hear about how clever they are (only they can see the fine invisible threads used for the Emperor’s Clothes) and hence you’re going to get those snarky smug, know-it all comments from Breyer J or one of the others pooh poohing the inventor’s contribution. To them every inventor’s invention is dumb, simple and shows no more ingenuity than finding and plucking that easily recognized banana off the banana tree (the latter is in an amici brief in Myriad) or using “generic” computer thingies to replace King Tut’s abacus man.

    After reading enough of the trustworthy ones of the amici curie (‘friends” of the court) briefs, the Supremes are convinced that those who dare to ask for a patent are no more than despicable “trolls” backed by their evil, draftsman trickery using lawyers and looking to stifle “true” innovation in this country. Therefore all those so-called inventors out there need a smack down. And therefore Justice Breyer is all too happy to deliver such smack downs with his teacher/preacher ruler stick.

  • [Avatar for Anon]
    May 1, 2016 06:50 am

    step back @ 53,

    I must concur, as the Justices will only turn to their amici to obtain opinions on how fine and resplendent their clothes are (while they merely flap in the breeze). They believe themselves too mighty to listen to any mere child.

    The opportunity for the Supremes to make their course correction (a la Diehr and Chakrabarty) was with Alice.

    Instead of feeding their head, they merely tumbled deeper down the rabbit hole.

    It is up to Congress to take back their authority (repeat the actions that led to the Act of 1952) and this time employ jurisdiction stripping and create a new Article III court that has not been beaten into submission by the Supreme Court.

    That being said, I have little faith in a Congress far too overwhelmed with the bulging pockets that the “voices” of Citizen United provides.

    When I say the way forward is dark, the statement is multi-leveled. The traditional (the way is difficult) as well as the figurative (dark as in secret – Trade Secrets and a guild mentality – as opposed to a “sharing” and open patent system).

  • [Avatar for Ternary]
    May 1, 2016 01:12 am

    Edward Heller @42 and @44. I reviewed the Cuozzo patent several times and clearly there is a solid invention. The invention is not merely “a marker on a speedometer.” The marker or color is based on a continuously updated speed limit from GPS. Thus, the invention is not the marker, but its reliance on the speed limit that is based on the actual position of the vehicle.

    In 2001 (on-board car-navigation became popular around 2004, I believe) this was a pretty clever invention that in its essence is now widely used by Garmin. Unfortunately, the claim has this ugly “integrally attached” clause, which was inserted in an amendment during prosecution. It is just bad claim language. But Justice Breyer and others who dismiss the invention as merely including a trivial color filter are wrong and either deliberately mis-characterize the invention or do not understand it. There is no problem with the invention. There is a problem with the claim. That is why we have review.

    Even in 2001 an attorney should have known to enhance the part with “the controller.” There is enough blame to go around between the courts, the PTO and the lawyers, without heaping scorn on a valid invention.

  • [Avatar for step back]
    step back
    April 30, 2016 09:48 pm

    [email protected] writes “If the judges and justices had to stick to real science, …”

    Not possible.
    It would require years of retraining.
    Can’t teach an old dog new tricks.
    (Especially one that knows itself to be supreme.)

  • [Avatar for Night Writer]
    Night Writer
    April 30, 2016 09:16 pm

    And, I really do wish that Ned would consider how harmful his position is to patent law. If the judges and justices had to stick to real science, we would not be in this mess. (And, obviously Ned is going after In re alappat.)

  • [Avatar for Night Writer]
    Night Writer
    April 30, 2016 07:02 pm

    I see Ned is dodging all responsibility and associations with Stern. Ned is behind the IPR challenge, but I think Ned follows the money. Ned is no friend of patents–an unethical money hound who is not defending his indefensible position. He is every bit as bad as Stern.

    step back: “You and I (old geezers) can rail as we want. Hardly anyone is listening. Life is too good at Starbucks with iPhone magic clutched in hand.” I think there is a lot of truth to this. Also, what I think is that they just buy off anyone that is too much trouble. I used to read Byte cover to cover too.

  • [Avatar for Anon]
    April 30, 2016 05:07 pm

    Mr. Heller,

    Whether or not we agree does not change the tactics employed, and the proper criticism thereof. Your tactics are disreputable.

    It is as simple as that.

    Change your tactics, come clean, treat points presented fairly and with inte11ectual honesty, and be willing to recognize when “differences” are substantiated, and conversely, when “differences” have no sustainable factual, legal and historical basis, and the items of criticism will take care of themselves.

  • [Avatar for Edward Heller]
    Edward Heller
    April 30, 2016 04:57 pm

    anon, I do not reject your support on strong patents just because you support business method patents. All of us cannot agree 100% on every issue, now can we?

  • [Avatar for Anon]
    April 30, 2016 04:27 pm

    Mr. Heller,

    “to the extent” that you omit items that simply hew to your own personal philosophy and “to the extent” that you engage in your advocacy as I have pointed out, the matter of you wanting strong and enforceable patent rights for other things is simply not helping you in the present discussion.

    That you do want strong and enforceable patent rights in other areas is noted with appreciation – in those other areas.

    Here, your comments draw the appropriate criticism.

  • [Avatar for Edward Heller]
    Edward Heller
    April 30, 2016 03:57 pm

    anon, we are on the same side to the extent that side wants enforceable strong patents.

  • [Avatar for Anon]
    April 30, 2016 03:40 pm

    With “friends on our side” such as the esteemed Edward Heller – see his comment at 39 – who needs enemies?

    Mr. Heller, that you think such a compliment speaks ill of wither your intentions, your knowledge, or both.

  • [Avatar for Edward Heller]
    Edward Heller
    April 30, 2016 02:19 pm

    step, you do know that I am behind the constitutional challenge to IPRs in MCM Portfolio LLC? We filed our petition Friday.

    I am just saying that Cuozzo’s “invention” is a problem for our side.

  • [Avatar for step back]
    step back
    April 30, 2016 02:12 pm

    Ned, what doth that have to do with rules of claim construction after a patent has issued and government has created property rights pursuant to black and white law?

    The fact that you keep changing topic does not escape readers endowed with brains. This is the wrong forum for you. Try Fact_Haters_United.com

  • [Avatar for Edward Heller]
    Edward Heller
    April 30, 2016 01:49 pm

    step, the problem we all have, really, is the quality of the Cuozzo patent before the Supreme Court: a marker on a speedometer dial that indicates the speed limit. He is not impressed, and, might I add, rightly so.

  • [Avatar for step back]
    step back
    April 30, 2016 01:45 pm

    Reading through the latest comments I see that you did indeed spot Kevin Noonan’s article on the Fantastical World of Breyer J.

    With regard to Kevin’s comment at 4/29 9:36AM, I would add that engineers and scientists go to school for many many years (especially PhD’s) to learn their arts. Amazingly, Breyer and his SCOTUS brethren of supreme intellect subscribe to the notion that the not-cross-examined “friends” of the Court will educate them via analogy as to whether molecular biology is more like lathing a bat from the trunk or plucking the leaf off the poisonous banana tree. Sheer smugness and arrogance.

    The emperor dons fabrics weaved of the most supreme vanity and finest self-worship.

  • [Avatar for step back]
    step back
    April 30, 2016 01:24 pm

    Night Writer @35-38

    Obviously struck a raw nerve there.

    Well. At least I discovered we are same age, same background. Yeah, the 1970’s. Remember when the Intel 4040 came out? And a whole 4kB of UV erasable PROM? Them were the good old days. I would read each issue of Byte magazine from end to end. Yeah. The good old days.

    No doubt that Lemley and ilk never burnt even one bit of ROM memory. That is why “information” is abstract to him and his fellowship of the anti-science sycophants.

    With that said, the demise of patent law, of science and of individual inventorship in this country is the lesser of our problems. The government is full of much bigger scams. You and I (old geezers) can rail as we want. Hardly anyone is listening. Life is too good at Starbucks with iPhone magic clutched in hand.

    BTW, did you catch Patent Docs tribute to the quotes of chairman Justice Breyer? Link can be found in the post scripts bottom portion of this page:


  • [Avatar for Edward Heller]
    Edward Heller
    April 30, 2016 12:58 pm

    Night, you do too much of an honor to equate me with Richard Stern and Mark Lemley. Really.

  • [Avatar for Night Writer]
    Night Writer
    April 30, 2016 09:26 am

    For example, if we can find a way to file an ethics complaint against Lemley with the state bar for knowingly misrepresenting facts, then this would go a long way to overturning Alice. The same is true of Ned. And —-GET—that they are at the heart of the problem we are having. Getting Lemley to have to face an ethics complaint for saying that software has no structure and then using a bogus cite to support that fact would go a long way to cleaning up patent law.

  • [Avatar for Night Writer]
    Night Writer
    April 30, 2016 09:15 am

    To sum up, if you want a rational SCOTUS, then we must punish those that are acting unethical that are presenting arguments to them fueled by Google.

    Everyone keeps asking what they can do. Well, one thing is hold people like Ned and Lemley accountable.

  • [Avatar for Night Writer]
    Night Writer
    April 30, 2016 09:14 am

    And get step back, that one of the tools of the anti-patent judicial activist is lying about science. Lemley has said in a paper (a publication in the vanity press called law journals) that software has no structure. That is unethical. Lemley knows that is not true and not supported by science. Get that these people intentionally misrepresent facts to get the end they want.

    This is at the core of why we have Alice. We have to stamp out this type of behavior. I would file an ethics complaint against Lemley with Stanford, but after investigating the likely outcome, I found that schools like Stanford and Harvard do not even care if their professors plagiarize. Even with strong proof of highly unethical behavior these schools do nothing. That is at the core of why people like Lemley can say and do whatever he wants divorced from reality with impunity—and why we have Alice. No accountability. No consequences.

  • [Avatar for Night Writer]
    Night Writer
    April 30, 2016 09:08 am

    @32 step back: I know all that. That isn’t my point. You are talking to someone that has taught many computer science classes and has been working with computers since the 1970’s. I have also been in patent law a long time.

    Your point seems to be that perhaps Ned is just a dolt and that is why he is putting forth the argument that a computer and software are not a new machine. I have blogged with Ned for many years. He is not a dolt. He knows exactly what he is doing in presenting these disingenuous arguments to the ignorant judges. Ned is friends with Richard Stern who is responsible for Benson. I have spent many hours arguing with R. Stern. Stern also presents disingenuous arguments because he doesn’t think that information processing machines/methods should be eligible for patentability.

    They are making these arguments not because they don’t know better, but because they know they can get away with it with the ignorant justices of the SCOTUS and judges of the Fed. Cir.

    Make no mistake that what Ned is doing is culpable. And, like R. Stern, is the worst form of deception coming from one that knows better to deceive the ignorant for their own gains. Despicable behavior.

    You step back should spend some time educating yourself on why we are having so many problems with 101. I can tell I did. And at the root of it is R. Stern and their subsequent protegees like Lemley and Ned.

    So, please do not stand with the unjust violators of our system. Help to shame them and hopefully get people to see that it is unethical to take positions counter to science to push an agenda. This right here —– right here—-is at the heart of Alice. All our problems start —right here—with Stern (and now Lemley and Ned). Even the notions of spirits that Stevens has, the concept that math is [email protected] given, etc. All of these are antiquated beliefs that Stern used for judicial activism to pull the wool over the justices’ eyes. Ned is despicable for continuing these arguments.

  • [Avatar for Anon]
    April 30, 2016 08:39 am

    Deception comes in many forms, but it is from those that pretend to be “friends of the patent system” that deception may be most dangerous.

  • [Avatar for Oa H]
    Oa H
    April 29, 2016 05:30 pm

    Hear hear

  • [Avatar for step back]
    step back
    April 29, 2016 03:50 pm

    Night Writer

    I suspect there are large segments of the population, including examiners at the PTO, who are of the type that says, I only believe what my lying eyes show me. The computer looks the same before and after I inserted that lil’ ole flash drive in (or floppy disc, or paper punch cards if you want to go that far back) and thus there is no new machine. It’s the same as it always was.

    Of course our lying eyes (when naked) don’t tell us about microbes, or about galaxies far out in space, or about magnetic fields, etc. unless we supplement them with instruments. Electrons are yet another thing that our lying eyes do not easily detect. So it’s easy for the I’m-from-Missouri crowd (the show me state) to deny the reality of the physical software that drives the machines.

  • [Avatar for Night Writer]
    Night Writer
    April 29, 2016 02:43 pm

    step back: both can be to blame. Ned and his lowly likes are a big part of the problem. Ned turns tail and runs when confronted. The fact is there is no basis for his argument and he is presenting it likely for monetary gain.

  • [Avatar for Anon]
    April 29, 2016 12:45 pm

    Sorry step – a spade is a spade and Ned is to blame for his lack of inte11ectual honesty and his own type of “amici” advocacy on the patent boards.

    This is just not something you should “look the other way” about.

  • [Avatar for Edward Heller]
    Edward Heller
    April 29, 2016 12:05 pm

    step, thanks for that.

  • [Avatar for step back]
    step back
    April 29, 2016 10:19 am

    The fault lies not in our Neds,
    But in our SCOTUS know-not feds.

    They are the ones who believe in techno tooth fairies,
    in generic weekend computers (yes powered by grad school pizza),
    in “abstract” as opposed to non-abstract ideas,
    in laws “of nature”,
    and in the plucking of leaves off the DNA fruit tree.

    So cast not blame on our one fish, two fish Ned.
    Throw thy mud at the SCOTI instead
    and at the so-called amici curie in their bed.

  • [Avatar for Night Writer]
    Night Writer
    April 29, 2016 06:35 am

    Ned, you didn’t respond to any of the issues but just reiterated your disingenuous characterization of computer plus software. You are clearly a person of low moral character. I think you are just trying to drum up business for yourself at the expense of the patent system.

  • [Avatar for Anon]
    April 29, 2016 05:37 am

    step back,

    Solid points – but what if the “magic” is pizza for some grad students over the weekend…?

  • [Avatar for step back]
    step back
    April 28, 2016 11:14 pm

    Anon @24

    Perhaps it might help to note to Mr. Heller that “software” is not a naturally occurring phenomenon. Nor does it appear due to thinking alone. It is manufactured.

    And just as interoperative gears must be manufactured to have teeth and grooves arranged at a same pitch so they can smoothly mesh together, software must be intelligently designed to mesh with the receptors of the computer hardware. Software written for an 18 bit machine will not mesh with a 16 bit machine. (No matter how often one chants the magic words, ‘apply it’ or commands to the device, ‘thou art generic oh computer, now do my bidding’).

  • [Avatar for Anon]
    April 28, 2016 08:59 pm

    Once again, Mr. Heller, you are confused with what I have been “giving” – and your reply is (still) steeped in errors (legal and factual) and obfuscations.

    I do not know how you continue to have these errors, seeing as I continuously correct your thinking about what I have been giving.

    You cannot “just run” or “just use” software until you FIRST change the machine with the addition of the machine component called software.

    Read again my post here.


    Recognize your own attempts at having the law be something that it is not.

    Stop yourself flat when you find yourself going on a lark outside of what the law actually is.

    There is no “permanence” requirement.

    There is no “at boot” requirement.

    A manufacture is a statutory category all on its own. – there is NO basis for requiring “more” – your “larger systems and machines.”

    Software is a manufacture and a machine component – by definition.

    Software is not math, nor is it your subtly “modified” running software to compute math. Executing software may involve that “running,” but executing software is NOT software.**

    Your desire to get to a certain point rests on fallacy and the deliberate denial of the equivalence of the Wares: software is equivalent to hardware and equivalent to firmware.


    **This is one prime reason why I have disagreed with Mr. Quinn’s portrayal here. Yes, it is “easier” to discuss software with action terms, but there should be no mistake made: software is not the action of, software is the manufacture that enables and brings about the action. When one takes shortcuts one must be on guard against the bastardization and conflation that those who have a philosophical agenda against software will only too eagerly take part in.

  • [Avatar for Edward Heller]
    Edward Heller
    April 28, 2016 07:45 pm

    anon, so long a you and other give example after example of larger systems and machines, like game systems, and the like, and with which I do not disagree in principle given my approval of Alappat, I am comfortable in remaining silent.

    People like you, anon, keep citing example after example of larger machines and processes to support your views. You have to recognize that.

    When we get down to computers simply running software to compute math, and no more, then we get to the exact point where I, and the courts, begin to object.

  • [Avatar for Anon]
    April 28, 2016 04:22 pm

    Edward Heller @ 19,

    Repeating yourself while ignoring every point I put to you readily shows that you simply are not willing to listen.

    May I suggest that this type of mantra from you is not appropriate for a dialogue.

  • [Avatar for David Rosenblum]
    David Rosenblum
    April 28, 2016 02:52 pm

    A Rational Person,

    Further to your, Anon’s, and to the points made by others,

    Imagine you have an instrument (medical, etc.). You can press an actuator to transform it into a better instrument. It is useful in that form but eventual transforms back to your original instrument. Thus, the better instrument is temporary. Do we deny patent protection for it?

    Now, we take the above-proposed computer out of its box, and install our innovative application providing live display.

    We power up the computer, and the screen evidences the innovation. Let us say the innovation is clinically useful to doctors in monitoring a patient, and in fact an innovative improvement.

    Without the installed application, the processor, according to the firmware and operating system, would, in a live sequence, operate switches and capacitors in a particular way.

    That live sequence, however, cannot match the live sequence that occurs when running the live, innovative, display application.

    In fact, it may be my opinion that, at no time in history, has anyone else run that particular live sequence. Likewise, at no time in history, has anyone seen the kind of visual effect onscreen that I am witnessing right now.

    The computer running my live display is a new machine that is useful and innovative. It is a machine that differs from the one running without the installed application. It is physically different, just like a machine running updated firmware or an updated operating system is different. The fact that the innovative application has a narrower market should not impede access to patent protection. How can inventing something that only benefits some patients/doctors as opposed to the public in general be a basis for denying a patent?

    Even though the running of my live display may be temporary, the computer, i.e., machine, doing it is something that was improved, by virtue of the innovative application. We are talking about what a human being invented that constitutes an improvement to a machine.

    It is not accurate to think of the general purpose computer as the mule and the software as the oral instructions shouted to the mule. The computer’s operation is, in accordance with the detailed dictates of the innovative application, provided input as to switching and capacitances in order to execute the innovative application. The mule can do what it wants; whereas, the computer is operating largely under the control of the executing application. The computer is, when so operating, a “new” computer, i.e., an improved machine, warranting patent protection provided the innovation and usefulness criteria are met.

  • [Avatar for A Rational Person]
    A Rational Person
    April 28, 2016 12:46 pm

    [email protected],

    Further to your point, consider this example:

    There are two boxes each including the same video display and input devices. One box is decorated with images for Fallout 4, the other box is decorated with images for Minecraft. Within each box is the same computer, except that the computer in the Fallout 4 box has the software for Fallout 4 installed on its hard drive and the computer in the Minecraft box has the software for Minecraft installed on its hard drive.

    To a user having no idea what is inside each box, the Fallout 4 box is a machine for playing Fallout 4 and the Minecraft box is a machine for playing Minecraft. Therefore, most people would consider the Fallout 4 box and the Minecraft box different machines.

  • [Avatar for Edward Heller]
    Edward Heller
    April 28, 2016 11:24 am

    Night, there really is a difference between using a machine and a new machine. For a very long time, the Federal Circuit was really confused on that issue. See, Application of Bernhart, 417 F.2d 1395, 163 U.S.P.Q. 611 (C.C.P.A. 1969). This led to the dicta in Alappat, and to State Street Bank because of the idea that a “programmed computer” was a new machine, when a “programmed computer” could be either a computer with firmware-like software or a computer that simply was used to run software.

    In claims, the distinction is easy to spot — when the claim says “computer implemented,” “by a processor” or the like, the invention is not in the computer but in the software.

    Now, this is OK, so long as the computer is being used in a larger machine, as in Alappat, or in a process as in Diehr. It is not OK when it is only running software as in State Street Bank.

    Night, the game is over, at least in the courts, that simply using a computer is “enough.” That was the real decision in Alice.

  • [Avatar for Night Writer]
    Night Writer
    April 28, 2016 06:52 am

    Ned, you are obviously playing a little game of, “if I ask a technical person if it is a new machine they will say no.” You are obviously playing a game in that the technical person will understand your question of one of hardware.

    If you ask a technical person, is a ROM, RAM, special purpose computer all equivalent they will say yes. And in patent law that settles the issue.

    You are intentionally using a minor misconception by the part of technical people to push an agenda in patent law. Unethical to say the least. Your type has destroyed patent law in this country and you should be ashamed of yourself. I hope you get your just desserts one day. I do not have words to express how much I disrespect you as a professional. You are the worst type of lawyer there is. One that will destroy our system for their own agenda.

  • [Avatar for Anon]
    April 27, 2016 08:43 pm

    Mr. Heller,

    You are incorrect in your statement of “ say, and you do not provide any evidence in disagreement, that using a computer to run a program does not create a new computer.

    It has been pointed out to you countless times that you skip a necessary first step: you must first change the computer with the software before you can “just use” the software. Your “version” would have it that a machine could “just use” software that is in no way, shape, or form, connected to the machine – as if by “magic.”

    And the point – once again – there is NO legal basis to mandate a component must be permanently attached to something. None.

    Continuing to deconstruct your rather peculiar attempts at conjuring “law,” your desire to chase some figment of “claim to a larger machine or process” is just avoiding the plain fact that manufactures are a statutory category in and of itself. Machine components are manufactures. Manufactures are fully allowed to be by the hand of man, and if the functional relationship aspect is met (which it is – by definition – for software), then there is NO legal basis for your very constrained views and attempted manipulations of law.

    Further, the “operate on boot” oddity you now propose ALSO has no proper legal tie.

    These are not new things to you. I do know that you are a self-professed “hardware guy,” but your attempts at spinning law to your belief system can only bring you disrepute.

  • [Avatar for Edward Heller]
    Edward Heller
    April 27, 2016 07:36 pm

    anon, “There simply is no requirement for a machine component to be permanently affixed to a machine for patent eligibility to inure.”

    The question is when is the computer new. I say, and you do not provide any evidence in disagreement, that using a computer to run a program does not create a new computer.

    The question of whether the machine is new or not becomes irrelevant if the claim is to a larger machine or process, or if the computer is claimed in a way that makes it clear that the new software has effectively become part of the machine. I think operating system software is an example because it is the kind of software that normally executes on boot.

  • [Avatar for step back]
    step back
    April 27, 2016 05:43 pm

    Appearance @12

    Nothing is going to make the SCOTUS bunch change their so-called “minds”.

    They’ve picked their “friends”-of-the-court (amici) and they’re going to stick with that fixedly mounted choice.

    Try not to confuse them with facts. That will only irritate them. The abacus man said so. You see? So. Stop.

  • [Avatar for Night Writer]
    Night Writer
    April 27, 2016 02:21 pm

    @12: or maybe: So Justices you think a machine that writes briefs with a mathematical algorithm is ineligible?

    Information processing is a physical process. It takes time, energy, and space.

  • [Avatar for Night Writer]
    Night Writer
    April 27, 2016 02:19 pm

    Ned you know your arguments are ridiculous. It is like arguing with someone that says the Earth is flat or the Sun revolves around the Earth. Just a ludicrous conversation.

  • [Avatar for Appearance of ...]
    Appearance of …
    April 27, 2016 01:12 pm

    I am wondering if an “erector set” or “tinker toy” analogy might get through to the judges. Under traditional patent law, if you had a kit of gears, or for that matter just metal and cutting tools, you could combine the gears and metal to produce a clearly patent eligible invention. A mechanical device patent application described the pattern by which you would combine these gears and metal pieces.

    Think of a computer is a kit of switches. These switches are physical devices. A computer program is doing is combining the physical switches according to a pattern. A well written software application is also describing the pattern by which you combine these switches.

    Now some applications — be they mechanical or computer applications, may still be patent ineligible by public policy. A series of instructions that merely implements a specific movie, music, or song is considered covered by copyright law. Similarly a mechanical invention that implements an abhorrent result can also be bared by public policy.

    If allowed, I think that someone bringing in a kit of mechanical parts, and a kit of electrical switches, into a SCOTUS or Federal Circuit presentation would be very effective. The question to the judges would be: So I combine from this kit, and it is patent eligible, but I combine from this kit, and it is patent ineligible?

  • [Avatar for step back]
    step back
    April 27, 2016 12:40 pm

    As I’ve said time and again, the electrons do not care what labels we hair-lite apes toss at them, be it ‘software’, firmware or hardware. They move nonetheless.

    To say that the electron patterns in an electronic machine (one that we refer to as ‘computer’) do not matter is ludicrous. Why do we call it an electronic computer in the first place?

  • [Avatar for Anon]
    April 27, 2016 12:32 pm

    Post caught in filter – please release and delete this reminder.


  • [Avatar for Anon]
    April 27, 2016 12:29 pm

    Your attempted differentiation is without a proper legal tie, Mr. Heller.

    There simply is no requirement for a machine component to be permanently affixed to a machine for patent eligibility to inure.

    Further, there is no meaningful distinction with “firmware,” as even “firmware” is update able (changeable), and is in truth no different whatsoever from software.

    Bottom line when it comes to the patent world is that software, firmware, and hardware are equivalent.

    Anyone telling you otherwise is just being inte11ectually dishonest.

  • [Avatar for Edward Heller]
    Edward Heller
    April 27, 2016 12:00 pm

    Night and curious, the question is whether using a computer to run a program change the computer into a new machine. I say, it does not. I also say that that you could not find a competent engineer in the field that would not agree that using a computer to run a program does not make the computer into a new computer. In order to be a new computer, that computer must be in its new state even when the program is not running, or when the power is off, and even when it is running a different program.

    If a computer in a particular state for only a moment in time, it is in a state. It is not a new machine.

    But do not mistake me. A programmed computer in a larger machine, or process can transform such and thus can create patentable subject matter. Also, a computer program that is essentially fixed, as a structure is fixed to land, becomes part of the land, part of the computer, and thus defines a new computer.

    Regarding the state of an individual, the programmed person is effectively a new person. But you have to understand that the programming is fixed to the person like a structure is fixed to the land. It becomes part of him or her. It is like firmware.

  • [Avatar for Curious]
    April 27, 2016 11:48 am

    But I do not agree that simply executing novel math on a computer generates a new computer.
    Yet performing a new method with an old tool is patentable?

    Let me ask another question — is the Edward Heller of today substantively different than the Edward Heller of April 27, 1961?

  • [Avatar for Night Writer]
    Night Writer
    April 27, 2016 09:31 am

    We should all be clear about what is going on here. The central problem is this:
    The SCOTUS goes off the basis that the math is some invariant rule of the universe and not a man made heuristic to solve a problem. That is the core of the problem.

    When people like Edward Heller tell the courts that a computer with a ROM is different than a computer using a RAM, he is misrepresenting science. No rational person would see the two as not equivalent and certainly equivalent for patentability. Edward Heller is one of the problems with the entire system. It is unethical for Mr. Heller to present these arguments to the court. And be clear that misrepresentation such as Edward Heller’s are the reason that the SCOTUS has not evolved to understand the role of mathematics in innovation. Edward Heller’s views are at the heart of the problem. The fact that a practitioner would present such views is unethical and incredibly destructive to patent law. The fact that he is presenting these views gives the judges on the Fed. Cir. and the justices on the SCOTUS the justification for maintaining iron age views of technology. Edward Heller is unethical.

  • [Avatar for Night Writer]
    Night Writer
    April 27, 2016 08:56 am

    @1 Edward and what is clear is that you are taking these views that assault reason to drum up business. This makes you unfit for any patent law discussion. You are no better than Lemley or any of the other unethical judicial activist.

  • [Avatar for Night Writer]
    Night Writer
    April 27, 2016 08:52 am

    Continue of @2 (not the Edward dredge), but I actually wrote a paper about 10 years ago that traced the opinions about math at the SCOTUS and it is based on math not being part of an invention but a tool as in about 1930. And in fact there is a case regarding antennas where the SCOTUS got it right.

    So, the SCOTUS goes off the basis that the math is some invariant rule of the universe and not a man made heuristic to solve a problem. To my mind, this rises to the level of ignorance where you are unfit to be a judge.

  • [Avatar for Night Writer]
    Night Writer
    April 27, 2016 08:49 am

    It is right that the math has turned into the invention in that it is not a general tool, but a tool (applied math) to solve a problem on a computer and was invented for that purpose and is highly unlikely to ever have another purpose.

    @1 Edward: Your view that firmware makes it a new machine but that software does not has no basis in science/technology/patent law and is merely a device for your anti-patent judicial activist views. Your view offends science and reason. Nothing you have to say is worth reading based on your willingness to offend reason for your goals.

  • [Avatar for Edward Heller]
    Edward Heller
    April 27, 2016 07:19 am

    A programmed computer is useful in a larger machine or process. A computer transformed by “firmware” or the equivalent is a new machine. But I do not agree that simply executing novel math on a computer generates a new computer.

  • [Avatar for Cindy Hadfield]
    Cindy Hadfield
    April 27, 2016 06:35 am

    Very well written article. I have a patent for an “Online Check Ordering System” that banks and large print manufacturers have been infringing on for years now. Every turn I take ends up in a dead end and the latest excuse they use is Alice 101. I enjoyed reading this article stating that a programmed computer enables the physical execution of a mathematical model into a physical device.
    Thank you for sharing your wisdom.