9 August 09. Technological arts
The Department of Commerce has ordered me to not file any briefs in
Bilski v Doll. They can do that for my situation, and it's
a bit frustrating, being that the case is in some ways the culmination of
several years of research and writing.
But at least I can still blog. And if you think that my blog
entry is somehow an official statement from the Department of Commerce,
you're a moron.
As I'd mentioned previously,
the Federal Circuit ruling in Bilski was deliberately vague, and left
the question to the implementers. It turns out that the folks at the
Patent Office took the ball and ran with it, and presented a series of
rulings that were much more reserved than allowing anything under the sun
to be patentable. It looked like software would become decreasingly
patentable, and articles about absurd lawsuits did disappear for a while.
That's where we were under the Bush administration. Under Obama, things
are very different. The new administration's choice for the head of the
Patent Office is David Kappos, who before the appointment had the title
President and Assistant General Counsel, IP Law and Strategy for
International Business Machines (IBM).
Now, I won't bother with conspiracy theories about how Mr Kappos will be
a tool of his former employer, or that patent policy will be determined
in shadowy meetings in Armonk, et cetera. I won't mention that
the Center for Responsive Politics
lists IBM as being a top-20 contributor to the Obama campaign, giving
just over half a million dollars. That'd just be gauche.
But Mr Kappos's view of what patent law should be matches that of IBM
very well. Is it because he helped to shape IBM's policy, or that IBM
hired him because his view fit the party line, or because he learned from
the corporation and gradually fit to their mold? Who knows, but the
outcome is that Mr Kappos's personal positions are very convenient to IBM, and
much less convenient to everybody else.
To summarize his key position for our purposes, it is that the USA
needs a clean technical contribution test for patentability. If
something makes a technical contribution, it should be patentable subject
matter, and that's it. Here's a relevant paragraph from his talk at a Brookings
from a few months back [transcript p 81]:
And my view, where the law needs to move further, building
on Bilski, is in the direction toward further clarification along the lines of a
technological contribution. So an approach that is, in my view, more
consistent with what’s already being done in Japan and in Europe, where
there are--there's much more of a focus on a technological contribution or
some nexus between the technology and the essential features of any
invention in order to confer patentability and I think that that goes a long
way to solve the problem with the patenting of abstract ideas.
See also the PDF
linked from that page. Note that he somehow does not consider software
or mathematics to be an `abstract idea,' and is referring only to business method-type
The technological arts test is very convenient for IBM. It declares that
the business method patents that have taken so much flack in the press
should not be valid, but that the software patents that have made $$$ for
IBM as its hardware sales shriveled are perfectly valid.
So, it's no surprise that the same arguments in Kappos's statements
above reappear in
IBM's brief in Bilski
where that PDF link is from Patently-O's list of
That brief explains that other tests, like the `machine-or-transformation'
test from the Federal Circuit's Bilski ruling, just get in the way, and
should be only advisory.
So this is what's coming, unless the Supreme Court explicitly responds
to it: the Patent Office will lean toward a technological arts test.
The key problem with such a test is that it is vague and malleable. At the same
Brookings event, John Duffy proposed that we should take an `I know it
when I see it' sort of approach: if it's taught at a technical college
then it's a technological art. Thus, software would be included and tax
methods wouldn't be. We'll ignore the fact that most technical colleges
teach business courses, or even that the 1990s Federal Circuit
explicitly saw nothing in the law to bar business methods.
As an undergrad, I got a Bachelor in the Arts in Economics, so I suppose
Economics is out. But then, my graduate degrees were from
the California Institute of Technology, exactly the sort of technical
institution that Mr Duffy refers to, and they were happy to give me a
degree with Science in the name for work in Game Theory, Political
Theory, and Economics. So it's certainly no bright-line test.
You can make fun of Mr Duffy's proposal, but you probably can't do much
better. Any definition will have its own vague points, and in the end,
the technological arts test basically breaks down to: is it mathy?
No, wait, that needs refinement too. Jumping back to Kappos/IBM's position, it
is that business methods, even with some math, are not patentable, but more
software-ish math should be patentable. The proposal means that a Fourier series used to process
time series of cash transactions should be different under the law from a Fourier
series used to process an electromagnetic signal. Given this, the
best definition I can come up with is: Is the field of invention, as generally practiced by
general practitioners, mathy?
Or let's just be properly cynical: IBM's definition of the technical arts,
and we have no evidence that this is not Mr Kappos's working definition, boils
down to: Is this a field in which IBM is heavily involved?
You are welcome to present your own suggestions as to what a technological
arts test should be in the comments; please withhold expletives. Mr
Kappos, in his comments at Brookings (and my chatting with him), never
claims that he knows the correct bright-line definition of technical
arts, which indicates that he is a fundamentally sane human being. But
he is still committed to that line of reasoning in determining what
The Constitution gave us one clause, that
Congress has the power to grant patents “to promote
the progress of science and useful arts”.
We have two limitations there: the first is that if it
isn't a science or useful art, it shouldn't be patentable. Even this is
constrained, being that people will slap the word science
anything, and laws of nature are excluded, and so on. As above, some
consider this subclause broad enough to cover mathy business methods,
while others don't.
The terms technological arts and science and useful arts
are sufficiently amorphous that we can take them as synonyms. So why
are Mr Kappos and IBM talking about a technological arts test at all,
when it's right there in the darn Constitution?
By suggesting that we put exclusive focus on that test (which IBM does
much more than Mr Kappos), they suggest that the other half of our
Constitutional clause--that patent law must “promote the progress”--be
shunted to the side. IBM suggests in its brief that once you've satisfied
the technological arts test, the promotion of progress follows as a
throwaway subordinate clause: “... the substantive approach is to
determine if the claimed process provides a technological contribution
and thus advances the `useful arts,'...” [brief p 5]
What would a further restriction on patentability aimed at promoting progress
look like? We have some not-seriously-controversial examples, like how the
invention must not be a law of nature, and must not be plain printed
matter. These restrictions, with an eye toward promoting progress and
keeping economic sense in the patent laws, read like
restrictions on which technical arts may be patented. That makes sense:
even though the intent may be economic sensibility, the
operationalization still has to be a restriction on what stuff gets to be
So to say that anything that passes the technological arts test
can't be further barred is to shut any entrée for restrictions to
ensure the promotion of progress. Like the printed matter doctrine,
the machine-or-transformation test from the Federal Circuit is not
an attempt to cut down on what counts as a technological art, but an
attempt to cut down on patents that don't promote progress. If we don't
like that test (and I could certainly quibble), then the solution is
not to throw out all efforts to prevent progress-hindering patents,
but to find a better solution.
Here's IBM's description (on p 17 of the brief linked above) of
“...the overall purpose of the patent system: to protect technological
advances.” The Constitution required promoting progress and covering technological
advances. In IBM's statement of the patent system's purpose, the
promotion of progress somehow evaporates, leaving only the focus on
technological advances. If it's a technical advance, it merits patent
But neither of the Constitution's two subclauses are by itself sufficient:
the law must cover only technological arts, and may only protect
technology to the extent that doing so promotes overall progress. The
technological arts test pushes the idea that the technological arts
test should be the dominant, or even sole, test for patentability, and
should not be fettered by efforts to limit patents to the promotion of
progress. It thus draws a harsh red line through an important clause
in our constitution.
26 February 09. Microsoft at the ITC
You may have seen the news that
Microsoft is suing Tom Tom over details of the FAT32
This is surprising in some ways, but in other ways not.
First, despite a huge amount of sabre-rattling, Microsoft has never been
exceptionally aggressive about its patent portfolio, so it is surprising
to see a direct lawsuit.
Tom Tom's devices (primarily GPS devices) run on a set of free and open source systems, and there exist
such software. However, although some people talk about using those
patents to countersue Microsoft, we're a long way off from that
happening--and you won't find anything on the OIN site stating that
such a “nuclear option” is really an option. Remember, IBM, Sony, and
others in the Network already have a slew of legal agreements with Microsoft regarding patent licensing, and
any suit will have to conform to all of them.
As you may have heard, the tide is turning in the US domestic courts
with regard to patents on intangibles like software. Since the In re Bilski
decision, there have been a series of decisions from the Patent and
Trademark Office (PTO)
to deny the granting of patents that are about as tangible and “tied to
a particular machine” as the FAT32 naming scheme that's under dispute
here. I wrote about Bilski
a few blogs ago, if you'd like a refresher.
A typical court trial on a patent triggers an automatic re-examination
by the PTO, and I sincerely don't think that these patents would stand
up to re-examination in the current climate. That's my own judgment call, and
there are no doubt others who believe that the winds are still blowing
in a favorable direction for this patent, and it would sail through.
There are other patents in the suit, including more physical
elements like a computer controlling parts of the car, that would fare
better. The FAT32 patent may thus just be the sort of piling-on of
complaints that lawyers so love to do. If you think that's the case (and
that determination is one of those tea-leaf-reading exercises),
then you can ignore the Bilski discussion here, and focus on the
many other issues of ITC procedure below.
But it's a non-issue, because Microsoft is suing at the International
Trade Commission (ITC). The ITC is
not a part of the Department of Commerce (like the PTO), and it's not a
part of the Judiciary, like the patent specialists on the Federal
Circuit. It is its own little boutique, whose Chairman reports directly to the
President, and that gives them a lot of latitude in deciding how they
are going to set the rules for their administrative court.
And indeed, many of the rules are different from the norm. The most notable is speed:
the ITC prides itself on finishing cases in months rather than years,
and even in less time than it typically takes the PTO to do a
Also, the punishment for infringement is harsher: in all cases at the ITC,
the dispute is over an item being imported--like TomTom's GPS
devices--that is allegedly violating U.S. patents, and the result of a ruling of
infringement is that the infringing item can not cross U.S. borders.
That is the real nuclear option, being that domestic courts typically
impose a hefty cash fine rather than entirely shutting down a business.
The ITC digresses in many matters of law as well; see my
blog op-ed column about
the ITC's exceptionalism
at the Washington Post, primarily in the context of pharmaceuticals. From
a policy perspective, I think it's a no-brainer that we want a
law that produces consistent rulings regardless of whether the court
hearing the case is at Commerce, the ITC, or the Federal Circuit.
We'll never achieve perfect harmonization, but there's much reason to
believe that the ITC's methods are much further from the norm than they
need to be.
In 750 words, I wasn't able to give any detail about the caselaw, so I got a stern email from a
practicing patent attorney that my Post article was all wrong, because any
infringement defense brought forth in the usual courts is valid at the
ITC, and continued about how non-specialists are all ignorant and should be banned from
writing about patent law. I have more space here, so I can tell you that the article
refers to the ruling in
Kinik Co. v ITC,
which found that “the defenses available
under 35 U.S.C. §271(g) [i.e., actions in the domestic courts] do not apply to actions under 19 U.S.C.
§1337(a)(1)(B)(ii) [actions at the ITC].”
But from Microsoft's perspective, the ITC is the place to be. Because
the ITC's rulings are lightning-fast and a product's punishment for
infringing is summary banishment from the country, an ITC case has force
in licensing negotiations that a plodding domestic case won't have.
As for whether their patents will be found to be valid and infringed,
there's some academic work, e.g., by
Bob Hahn and Hal
that says that the ITC is more likely to find
infringement than other courts. This is a pro-American bias, by the way,
because in the majority of cases (like MSFT v TomTom), it's an American
company whose patent is said to be infringed by a foreigner. Rulings regarding U.S. companies suing
other U.S. companies (who may be producing products in China) show less lopsided outcomes.
On top of that, we really don't know what the ITC judges think of the
shift regarding intangible patents. Bilski left tons of room for
ambiguity, and we've seen time and time again that the ITC is
comfortable setting its own course in these situations. So much
wiggle-room in the rulings means that much room for different standards
to evolve in the normal domestic courts and the ITC. I'm sure there
are people out there, probably a few at Microsoft's legal department,
who can make a strong argument that the ITC would hold the FAT32 naming
patent valid even though the PTO and Federal Circuit may not.
Now, if the ITC's rulings are too far afield, then TomTom can appeal
to the domestic Federal Circuit, which will ponder the issue for a year
or two, but through the entire process TomTom is losing millions.
So for the long-run harmonization of infringement standards, it's
relevant that ITC rulings are appealed in much the same manner as
rulings by the PTO's administrative court, but that doesn't
provide much succor for TomTom in its immediate predicament.
So it all points to a strong move by Microsoft to get its patents
licensed by TomTom--and quickly. Pundits have noted that other devices
are also no doubt violating the same patent (e.g., Amazon's
made-in-China Kindle) but
it's only TomTom that's being served with legal papers. The simple
explanation is that Amazon is a U.S. company and TomTom is a Netherlands
company, and so TomTom can be favorably sued in a
court that is something of a wildcard relative
to the traditional Federal Circuit system. Microsoft can use the ITC
as a tool to force a licensing agreement from TomTom, but can't use the
traditional domestic courts to the same advantage against U.S. companies.
8 February 09. Physical v intellectual property
The question for the day is: is it reasonable to class intellectual
property along with physical property?
says no: physical property is based on a sort of natural
right, and the legal default is that you get to own stuff; intellectual
'property' is an entirely artificial construct invented to advance
society in certain ways. Thus, to lump intellectual property in with
physical property is to imply that authors and inventors are natural
owners of their products.
Mr. RMS also says that copyright law, patent law, and
trademark law are too different to be lumped into the same class, so the
term is misleading in that respect too. No point arguing that one; there
are similarities, there are differences, so you decide if they should
be categorized together or not. If any librarians are reading this,
please edify us on any apropos classification theory.
The thesis which I'll present here is that yes, physical property and
intellectual property are indeed both property; this does not mean that
we should be more blasé about intellectual property rights and
grant them to anyone who claims them, but that we should remember how
much thought and careful design went in to our physical property rights.
Text and designs are obviously different from
household objects, but we all knew that. In fact, automobiles are
also different from household objects. So is land, and the houses
built on that land, which differ from each other. Your kidney is also
significantly different. Oh, and commodities such as corn, which differ
from corn futures. Correspondingly, the rights associated with all of
these things are different.
There are a number of rights typically associated with ownership:
- right of transfer
- right of sale
- right of use
- right of modification or development
- right to exclude others from use [and a number of subclasses within this
There is a multitude of things that we call property that
lack one or many of these rights, some of which I listed above. E.g.,
you have the right to transfer but not to sell your kidney. The study
of property law is the study of which items from the rights menu should
be applied to which elements of the objects menu. Many a bookshelf has
been filled with discussion of that simple connect-the-dots exercise.
Some books on that bookshelf (e.g., mine) are about stories or designs or
other nontangible concepts. But apart from the fact that the object to
which the rights are associated are abstract, the work of analyzing the
correct rights to assign to which items and how to operationalize the
rights in law is about the same for the ethereal and ephemeral items.
On the left, you've got exactly the same menu of rights; on the right
you've got a list of abstract concepts, and the task of connecting the
dots is the same as above. Of course, we must take into account the fact
that text has different properties from a blender, but a competent study
of real property (real as in land and houses) also takes into account
how land is different from a blender.
If there were a single block of rights granted to all forms of physical
property, and then we came along and called a storyline property,
then that would be misleading because the storyline would be the odd
man out. But because property is merely an item to which some
bundle of rights may be attached, the storyline doesn't stand out at
all: it just has associated different items from the menu of rights that
could be granted.
And what is the correct set of property rights
for a storyline? Mr. FK of Alexandria,
argues that they should
be patentable. If software--text on paper or a hard drive--can
be patented, then why not a storyline, he argues. Having studied the
list of legal justifications for software patents myself, I actually
agree with Mr FK. He doesn't mean to, but is making a strong argument
against patenting software.
Is the term intellectual property used to mislead? Yes, by assuming
that there is a monolithic single set of rights that all property has,
and therefore that exact set of rights should apply to text or designs.
In this case, it's not the term intellectual property that's
misleading, but the term property, which implies that monolithic
set of rights. One can combat this by comparing abstract objects to
less-than-simple real-world objects where not all rights are taken
as given, like land or kidneys. Or how about an emergency room? The
owner of an emergency room does not have the right to exclude, because
society would be the worse for granting that right. By comparing code to
a blender, we mislead, but by comparing code to other objects, we can
edify how ownership of a block of code does not immediately mean every
imaginable right at once. More examples below.
For another example of how the metaphor between intellectual and physical
property can be useful, let's ask whether the DMCA is a
property right. By the above reasoning: yes, because it provides the owner
with some items from the menu of rights associated with property, notably
the right to exclude. This has important political implications. The
argument that the DMCA is a newly invented property right forces us
to apply the usual 'should this right apply to this type of property'
analysis we've done a hundred times with other items, but which nobody
did with the DMCA because it was never billed as a property right. I'm
not of the impression that it would pass that analysis.
discuss physical property rights as natural or inherent or a default
right. This is, as the social scientists say, problematic.
First, there's the problem above: there's a whole bundle of rights which
could be granted or not, and is every right included by default? One
has the right to leave an automobile sitting on the side of the
road--some call it parking--and if others so much as
touch the car, they can be sued. Can I leave my couch on the side of
the road and expect the same property rights? What if I install a couch
alarm? Why is it legal to place a car on the side of any country road
but not a tent?
So the definition of default rights ain't so obvious, which brings us to the question of whose intuition we should go by. A couple of options.
The only truly natural property law is that the guy with the biggest stick gets everything he wants and everybody else splits the rest. It's no coincidence that the 'real' in real estate is Spanish and Portuguese for 'royal': it used to be natural that the king (the head of the army) owned all land and we all just lived on his land by his generous grace.
into your favorite search engine, and the first few links
are likely to be pretty amusing. Lots of clip art of flags and eagles.
From the first hit as of this writing: "Welcome to the Property Rights
Research web site. If God and Country and family are your top priorities,
you'll like this site." What do God and country and family have to do
with property rights? I mean, the Bible
says that women can't even
own property, let alone debate the eminent domain clause.
These guys want property law to be written around an individualistic
`if I can grab it and hold it it's mine' philosophy. Some are
dismantle-the-government, `if you step on my land I'll shoot you' types,
and some are neoclassical `if purchased then deserved, by definition'
types (and some just haven't bothered thinking much about the axioms
underlying property law). Notice how quickly individualistic property
rights imply that you don't have to pay taxes or to make sure your
restaurant meets the health code. If all property rights are inviolably
bundled with all property, then libertarianism immediately results.
My own gut intuition toward
objects is that if I'm in proximity to and am using an item more than
anybody else, then it's mine. [Many Westerners who visited parts of
Africa have told me anecdotes of people who use this concept of property
rights.] Under U.S. property law, this blatantly fails. If somebody
borrows a book I own and uses it every day for years, I can go to her
at any time and take it back, even though her attachment to the book is
greater than mine. That is, there's a great ledger in the sky listing
who owns what item, and ownership is only transferred via mutually-agreed
upon entries in the ledger. To be more correct, the ledger
lists property rights associated with an item, like the right to use or
the right to sell, and those rights get transferred around, sometimes
all at once in a fee simple sale, and sometimes piecemeal, like a rental
To summarize this option, we define property rights in terms
of the market.
None of the above
approaches to property rights match actual Western property law very
well. The best fit comes from a simple question: what is the socially
optimal allocation of rights?
Bear in mind that we live in a market-oriented society; we can have the
'is the market the optimal structure' debate later, but must take it as
given that the principle of the market is ingrained in the society, and
to some extent a healthy market is requisite for a healthy society. That
means that the double-entry system gets it half-right, but is vetoed
left and right when not appropriate or socially optimal. If your car
threatens the health of others, or your tree is getting in the way of
the power lines, or you want to make a fast buck but all you have to
spare is your kidney, all your market-based rights are out the window.
The neoclassicists will try to trip you up into thinking
that society is built around natural, objective property rights rather
than social construction (some do call themselves 'objectivists',
after all). But it's a trick of definitions and not-quite logic. First,
define the market as natural. If you purchased something, then you
deserve that item and are its natural owner. With that definition
there's a lot of overlap between their definition of what is deserved
and what is legal. But even if we accept the definitions, (market
⇒ natural/deserved) and (market
⇒ property law) does not
To revisit the original question, the socially optimal allocation of
rights is exactly what intellectual property law is intended to do
as well. Sure, IP law is artificial, but physical property law is
equally artificial; we're just so used to it that we've forgotten.
Mark Lemley gives a much more
nuanced critique of the phrase 'intellectual property' in
[which is not to disparage the commentary at the head of this column,
but to say that Mr. Lemley is a professor at a law school who's spent
much of his life studying IP]. He concedes that the social benefit story
generally works: “Demsetz believed that the creation or alteration of
property rights could be explained by asking whether the social gains
from internalizing an externality exceeded the costs of doing so.” (p
10, giving every indication that he agrees with Demsetz) However, he
points out that most of the externalities from physical properties are
negative externalities to be avoided via stricter property rights, while
most externalities from intellectual properties are purely positive. This
means that in physical property, `free riding' is bad--it crowds out or
otherwise hurts the owner--but in IP, it takes several steps of logic
to convince us that that downloading that song hurt or damaged the owner
of the original song. You could make that argument, but you'll need to
go through a physical property metaphor to do so: something has to get
Lemley's paper doesn't really disagree with much of what I state above,
either about property being a complex bundle or property or being
a social invention to maximize social gains. But he still suggests
throwing out the term 'intellectual property', because of the difference
between positive and negative externalities, and therefore the limited
applicability of free riding in the IP context. To rephrase, it is
correct to set intellectual property as a subset of property, and to do
the same social-benefit analysis, but people apply the analysis wrong
in major ways.
My first reply is that you can see any situation two ways: if the default
is that the public is gaining positive externalities, the private
citizen is restricted from taking action to restrict those benefits;
if the default is that the public suffers negative externalities, the
private citizen is forced to take action to provide public benefit.
One can spin most stories in a destruction-of-value or creation-of-value
direction depending on the default (and every party will of course claim
that the natural state of things is the one which benefits or does not
restrict them). I can't walk around the neighborhood naked because not
wearing clothes creates negative externalities, or because covering my
pasty hide creates positive externalities?
Second, it is my opinion that crappy method by others does not mean
that we should throw out the term or the entire means of analysis. No,
we should just do the analysis better. I posit that without the term
'intellectual property', people would still be drawing metaphors to
physical goods. As anybody who's ever taken algebraic topology or
comparably abstract topics quickly works out, people think in metaphors
to things they can see and hold in their hands, whether the language
facilitates it or not. Everybody will continue to provide physical
examples and analogies; we just need to provide better ones.
So, here are some examples of physical goods which provide positive
externalities, for which law therefore does not grant/limits the granting
of private property rights:
- Emergency rooms: a physical place
and pile of goods where the positive externalities are too great to be
- The club that leaves its windows open: you can't
bill the guys lingering on the sidewalk in front, even though they're
enjoying the same music as the guys who paid the cover.
photography of a public space: even though the architects put a year or
two of effort into the work of art you just snapped, you're welcome to
photograph the facade, frame the picture, and sell it to offices for
use in decorating their rows of cubicles. Go ahead, take a picture of
your neighbor's laborious flower arrangement. (people constantly try to
restrict this one, with limited success)
- Notorious possession:
If the area in front of your building is a public space for long enough
(like places with a semipark in front or those skyscrapers with a sidewalk
inside the frame), then you can not revert it to a private space, because
that destroys positive public externalities (notorious possession
has loads of caveats which you can look up if so inclined).
- Zoning: residents of many areas need permission to build on their
land in a manner incongruous with the surroundings. Since the status
quo is a consistent theme to the area (which people evidently like),
this is a restriction on private property usage to prevent the private
destruction of positive externalities.
Notice all the parentheticals: there is abundant debate in physical
property--flowers and buildings and pants--about how to handle
externalities, and despite millennia of physical property precedent we
still don't have set and finalized rules. But the base is that if you
put your goods in a public place, you have a carefully limited right to
exclude--which sounds a lot like intellectual property.
Let's not abandon the methods of analyzing property rights just because
some people don't apply them correctly. Instead, we can talk about
intellectual property as physical property and do it correctly, to show
that property rights are not to be granted to anybody who wants them,
but should go through the same cost-benefit analysis applied to rights
in physical property.
31 October 08. In regards to In re Bilski
The ruling for In re Bilski is out. We had all hoped that it would
resolve some long-standing questions on the patentability of software,
but instead it is merely the prelude to a debate.
This was an en banc ruling, where the patent on a business method
was struck down 9-3. That alone shows us that the Court of Appeals for
the Federal Circuit is not a bunch of pro-patent fanatics--especially
the majority that aren't former patent attorneys.
The judges who do still believe that everything should be
patentable are in a dwindling minority. They don't have support at the
Supreme Court, they don't have support at the Patent Office, and they
don't have majority support in their own building.
OK, enough politics; on to the content of the ruling.
The primary contribution of the ruling is to sweep away much of the cruft
that has grown around this topic over the last decade, including several ad hoc inventions
of the very court that wrote this ruling. It arrives at a simple rule
for determining whether something is patentable: is the patent claim for a
machine or transformation of matter? If so, then it is patentable subject
matter. The overall ruling seems to congratulate itself over sweeping
away the cruft and getting to that simple, clear heart of the matter.
But it doesn't answer the question. All the cruft (which I'll discuss
further below) evolved as many separate parties tried to answer the
question of what is a machine. It's not an easy question. For example,
a mental process, which is definitely not a machine, could easily be
written down to a hard drive, which definitely is a machine. Is the
data-plus-drive amalgam a machine or just a mental process with an
off-the-shelf part added to get around a technicality? That's really the
billion-dollar question: when does an abstract algorithm become a machine?
Here's the answer from the ruling: “We leave to future cases the
elaboration of the precise contours of machine implementation, as well as
the answers to particular questions, such as whether or when recitation
of a computer suffices to tie a process claim to a particular machine.”
So the ruling explicitly states that it won't answer the key, central question.
On the positive side, the ruling does make progress. First, in throwing
out all that cruft, it threw out many of the excuses that people give
for software being patentable. Notably, it rejects the assertion that
any process of any sort can be patented. The machine-or-transformation
rule requires that the process either be fixed in the form of a certain
machine, or make a transformation beyond just multiplying numbers
Despite claiming that all that matters is the machine-or-transformation
test, the ruling also bears in mind many other necessary conditions for
patentability, such as the rule that a patent may not
“wholly pre-empt” a law of nature or principle or mathematical
if you wholly pre-empt a mathematical algorithm within some narrow
field of endeavor, the court rules that this is still a pre-emption. I'll
have a little more on this below.
There is the State Street rule that an item is patentable if
it produces a “useful, concrete, and tangible result,” which this
ruling explicitly dismissed. I always hated this rule, because it is
entirely vacuous, especially as the State Street court took pains
to interpret concrete and tangible broadly--and it's hard
to imagine a patent that is worth filing but is somehow not useful. If your patent
draftsman can't write up your patent to be useful, concrete and tangible,
it won't be hard to get a new one who can. But we now need to determine
patent-eligible subject matter by the machine-or-transformation test
presentend in this ruling, which is not vacuous, so State Street's
blank check for any process patent has been revoked.
The ruling pointed out that U.S. law has never had a “technological
arts” test for patentability. They did the right thing here, because
the phrase is impossible to define precisely. We're having enough trouble
defining the word machine; there's no benefit to shifting the debate
to the more vague and subjective word technology. Similarly, there's no point
in defining an exception to patentability like business methods,
the ruling states, because it'd be a waste of time to try to pin down
a definition of the excluded field.
On the key question of when information becomes a machine, the ruling
does provide some clues:
“First, [...] the use of a specific machine or transformation of an article
must impose meaningful limits on the claim's scope to impart
patent-eligibility. [...] Second, the involvement of the machine or
transformation in the claimed process must not merely be insignificant
extra-solution activity.” For more on extra-solution
activity, have a look at my law review
(PDF) that focuses
heavily on the idea.
In the earlier segment on pre-emption, we got what I take as a sample application of the
first of these rules: in the algorithm in the Supreme Court's Benson
case “... the limitations tying the process to a
computer were not actually limiting because the fundamental principle at issue, a
particular algorithm, had no utility other than operating on a digital
computer. [...] Thus, the claim's tie to a digital computer did not
reduce the pre-emptive footprint of the claim since all uses of the
algorithm were still covered by the claim.” The ruling gives other examples,
many taken from the Supreme Court, of cases where the computer does or
does not limit the algorithm in a sufficient manner to restrict
patentability (notably in Flook, where an alarm to measure
hydrocarbon temperature is still not sufficiently tied to the machine to
The Benson example, which talks about limiting scope and pre-emption, and the machine-or-transformation rule
regarding how “the use of a specific machine ... must impose meaningful limits”
bear much in common. They indicate that if a computer is merely being
used as a transparent medium for the algorithm, then the patent is an attempt to
patent and wholly pre-empt an abstract algorithm, and is not a claim on a machine. If
the computer is not merely a transparent medium and is a limited use of
the algorithm, then the patent is for a machine.
Did my rubric in the last paragraph sound vague? As stated, it is, and it's
all this ruling leaves us. We have moved a little forward in the debate,
because the ruling has thrown out things like the “useful, concrete and
tangible” rule and done what it can to shut down the argument about a
technical arts test. It thus allows us to focus a little more closely
on the question of when an abstract work becomes sufficiently fixed to
a physical environment that we can call it a new machine. It provides
a few hints about how that measurement should be made, in the form of
a repetition and not-overly-narrow interpretation of pre-emption rule and
an emphatic repetition of the rule from two Supreme Court rulings that
extra-solution activity does not make something patentable. But
the key question itself remains unanswered and still open for debate.
15 July 08. How strict constructionism can be judicial activism
This is a note on the term `judicial activism', which is misused in
subtle ways among pundits and politicians.
The key to how it is misused is the ambiguity of the terms liberal and
conservative. I count five (5) distinct uses of these terms.
The first three are familiar to everybody. There's the liberal/conservative scale regarding
change in general, where the L team is forward-looking and the C team
seeks stability. There's the social scale, where liberals believe people
should be left to do what they want, and conservatives seek a social
order reminiscent of Norman Rockwell paintings. There's the economic
scale, where liberals believe some social services are necessary, and
conservatives seek smaller government.
These three scales are only tenuously related. It is easy to find
futurist social conservatives, social liberals for smaller government
and any other combination of the above. But, with only the words
liberal and conservative used for all three axes, there's
a strong--and clearly false--implication that one who is liberal on one axis is
liberal on the others.
That said, let us move on to judges. Judges are often described as
constructionists or activists, as if there is a single axis along
which we measure judges. But as with liberal/conservative, it confounds a
couple of concepts and just creates confusion. So, let's make some
There are two components to a law: the statute in
the Constitution or as passed by Congress, and the interpretation of the
statute by courts who had to contend with the law. One school of
thought, strict constructionism
, contends that one should focus as
much as possible only on the statute as written, rather than subsequent
interpretation. Congress wrote what it darn well intended the law to be,
so why should later judges and pundits modify that intent?
The constructionist view bears much in common with the neoclassical
economist's viewpoint, that people are very rational and very capable of
forseeing the future. To the extent that this is correct, the
constructionist claim (that Congress wrote what it intended the future to
look like) works.
I work with patents, and patents are an excellent example of how
constructionism and the hyperrational assumption can go horribly wrong.
Thomas Jefferson wrote what is now 35 USC §101 (inventions patentable), and it
hasn't even been looked at since 1952. So:
did the 1952 Congress, or Thomas Jefferson, intend that web page
designs should be patentable? Even the Psychic Hotline would have
difficulty with such a question, yet a strict constructionist has a
simple answer: yes, they did intend so, because they would have said so
The alternative is to look at more recent rulings and try to conform
with those. My impression is that this is the modal type of judge: they
try to rule in conformance with the law, but that includes equal
measures constitution/statute and recent rulings. Let us call this the
developmentalist approach; some call it the activist approach.
The language typically used sets constructionist = conservative and
activist = liberal.
As an aside, the constructionist view toward the U.S. Constitution is
often characterized as interpreting the constitution the way the
Founding Fathers intended it. But this is an incorrect phrasing.
Jefferson again: “No society can make a perpetual constitution, or even
a perpetual law. The earth belongs always to the living generation.”
[Letter to James Madison, 6 Sept
The statement `I am a strict constructionist, because
I interpret the law the way a set of developmentalists did in
1776' is somewhere between incoherent and ridiculous. Rather, the sane
strict constitutional constructionist generally shoots for a direct reading of the
words as written, outside of the context of colonial times.
This is legal Latin for “to stand by
things decided”. That is, if judges past have decided that the law of
the land is X
, then ya don't change it to Y
unless there's a darn
Different judges interpret the phrase darn good reason
differently. Some overturn past rulings at the drop of a legal hat;
others steadfastly stand by the past rulings, and just mumble something
about `it's a bad law, but it's Congress's job to change it' in rulings
that they aren't happy writing.
There are two pairs of terms used to describe a judge's
attitude toward stare decisis. The first is
liberal/conservative and the other is
constructionist/activist, and once again, both pairs of terms don't
correspond to any of the above uses of these terms.
There are four possible combinations of liberal/conservative in the
context of statute and stare decisis, and it's worth going over
all four, because they reveal an important asymmetry.
It may happen that the law as currently interpreted differs significantly
from the law as written. This is common for a law written decades ago,
due to simple drift in conditions and legal understanding. The first
option in this case is to be a statute liberal and a stare decisis conservative.
That is, a judge could be a conservative in the sense of maintaining
the status quo.
When there is a difference between the status quo and the original statute
from times past, it is impossible to simultaneously be conservative with
regards to both. Of course, this doesn't keep many judges from trying.
The next possibility is for a judge to be liberal with regards to both
statute and stare decisis. Such a judge really is just making up
the law. You won't find a judge anywhere who claims such a position,
though there's endless debate as to whether some judges act like this.
Therein lies the asymmetry between liberal and conservative:
conservative on both scales is OK but usually impossible, but liberal on
both scales is an abuse of judicial power.
The next option is to be a statute liberal and a stare decisis conservative.
There are people like this in many contexts: folks who insist that the U.S.A. once had a decidedly Christian
government (a claim that is itself up for dispute) and therefore the
present government should be devoutly Christian as well; folks who
insist that the only good music is the kind they heard in high school;
folks who insist that all families must consist of a mother, father, and
at least two children because that's how it had to be on the farm.
Such people are radically liberal, in the sense that they oppose the
status quo in favor of something different, which happens to have been
the status quo at one point in the past.
Judges of this type are often called judicially conservative. Yup, a
judge who rules for changing the status quo when faced with a conflict
between statute and rulings is called judicially conservative, and a judge who
prefers to maintain the status quo is typically called judicially liberal.
It's things like this that make people learning English as a second
language hate it so much.
Figure One: To revert to the means of judging in times past would be a radical, jarring change from the present. (Painting credit: Raphael: The Judgement of Solomon, c. 1518-19)
Patent law is a good example of judicial conservatism/status
quo liberalism. The circuit judge who decided that software and business
methods should be patentable (Judge Giles Rich) was very vehemently
constructionist in citing statute and reading it as literally as
possible. As such, he was massively activist, because he overturned a
century's worth of stare decisis, including several rulings from
the Supreme Court.
You know I am not happy with Judge Rich's ruling, but there are other
cases of activist constructionists, the most salient being those who ruled
in Brown v Board of Education, whom we all love to death. So even
after we have acknowledged that the scales of liberal/conservative
with respect to statute and liberal/conservative with respect to
stare decisis are entirely different scales, and after we've
pegged a judge on both, we still won't know whether their rulings are
liberal/conservative with respect to the social and economic
scales that people actually care about.
The term activist judge
bandied about by certain individuals, invariably as a derogatory term, but without clarifying
to which of the above two sometimes contradictory definitions the speaker is referring.
But the confusion is typically deliberate, and implies that any activism
in the sense of interpreting laws based on judicial understanding must
be of the radical form of arbitrarily revising law.
The activism question often comes up in judicial hearings as
well, where judges often attempt to characterize themselves as strict
constructionists, implying that this is a good thing. But it seems
preeminently clear that a good judge makes an effort to balance statute
and recent rulings in every situation. The Constitution just doesn't say
anything about computer-generated
pedopæliac images, so
for a judge to claim that he considers only the constitution in deciding
such an issue is to say that the judge feels at liberty to just make
Not to accuse President Bush of simplistic thinking, but to say that
any judge that does not strictly follow statute is rewriting the law is
simplistic. Such a claim only works when the law as written is entirely
and perfectly appropriate to all situations, even decades later--and
remember that a case appears before a higher court only when there is
some sort of open question, ambiguity, or controversy about the law as
written. Thus, any high court judge that isn't braindead is an activist
in the first sense of re-interpreting statute as written; if we insist
that that means activist in the sense of inventing law, then we can only
conclude that all judges are activist in the derogatory `hijacking the
law' sense used by folks such as the guy linked above.
But why be abstract when we have an easy example? The term `activist
judge' is the term preferred by people complaining about gay marriage.
The big ruling in the gay marriage issue was Goodridge v Department
of Health, which was the ruling in Massachusetts that allowed same-sex
civil unions--and did so via an allegedly strict constructionist
reading of the equal protection clause in the MA constitution, no less.
With regards to statute, there is clearly ambiguity because nobody ever
bothered to strictly define the meaning of marriage, just as Jefferson
didn't specify whether web pages should be patentable.
You could ask what the word marriage meant in 1776, in which case
you'd probably find gay marriage was not intended by the law--and neither
was marriage between whites and nonwhites.
As for overturning stare decisis, I'm no expert on MA marriage
precedent, but giving a casual look `round, I am unable to find
claims that Goodridge was in contradiction of past court rulings.
For so many claims that this is an activist court, you'd think somebody
would find the ruling that they were supposedly contradicting. Rather,
marriage law in the U.S.A. has been a slow slide toward disaggregating
marriage into a series of social services (especially given the strict
interpretation of the “no establishment of religion” clause in the
Constitution), and Goodridge fell right into that by interpreting
the civil union as such a bundle of social services.
So what we get here is that the court in Goodridge wasn't actually
activist at all in either the statute or stare decisis sense. It
read directly from the MA constitution using a plain English understanding of
the language about equality under the law, and did not seem to disagree
with past court rulings. So we conclude what many of you have probably
been thinking all along: that the term `activist judge' in this context
really is just a polysyllabic way of saying `socially liberal'.
Now, there's a specific reason for conservative rhetoricians to confound
all five axes and claim that liberal on one means liberal on the other
four, which returns to the asymmetry discussed above: if a judge is
liberal on both judicial axes at once, then that judge is just making up law.
This is the crux of the implicit argument in the term `activist judge'.
If we start with the false premise that a judge who is liberal on
one axis is also liberal on all four other axes, then we get the false
conclusion that all socially liberal judges are just making up the law,
and so the only good judge is a socially conservative judge.
21 April 08. The legality of absinthe
I finally got some absinthe last week.
There are many types. Like many liqueurs, it is basically just an
infusion of a few pleasantly-flavored plants in grain alcohol. Being
grain alcohol, it is about 50% alcohol by volume, but you water it
Now, when watering it down, it goes from grain alcohol clarity to the
opacity of milk. This is fun, and there is a little ritual built around
the process, typically involving a sugar cube perched on top of the
glass. Having a ritual associated with a social beverage is a big perk,
and probably has had some hand in making absinthe so popular.
I also have a full tea set, and get great enjoyment from the
process of pouring water from the kettle to the teapot to the
ocean of tea to the sniffer cup to the tea cup.
But you know the real reason absinthe is famous: wormwood, which has a
chemical known as thujone. I have no idea what the effect of thujone is
on the human brain; I get the impression that nobody else does either.
Some commenters have said that it's something of a stimulant, so
absinthe is a bit like having a black Russian (i.e., vodka + coffee),
but I'm not sure if even this much effect has verifiable evidence behind
it. As above, it's 50% alcohol straight, is watered down, and is heavily
spiced, which all adds up to being able to drink a lot of alcohol
without tasting it. Having such an easy means of drinking quite a bit of
booze without knowing it is already enough of a recipe for loopy
behavior, without recourse to obscure chemicals.
Absinthe was a scapegoat of the temperance movement, and was banned in
both the USA and Europe. I don't have the exact history--the USA
obviously spent the `20s banning a lot more than just absinthe--but
as we rolled in to the new millennium, thujone was banned (sort of)
in both the USA and EU.
You may have read that absinthe is now legal in the USA. What changed in
Nothing. Nothing at all.
My favorite textbook on labor theory.
The most credible source I've found to this point has been
an egghead-oriented site on mind-altering substances named
with a lawyer involved with an effort to import absinthe into the USA.
From what I gather, thujone is banned, but the test used for checking
for thujone is not very sensitive, which opens the question of what to
do with beverages with low thujone levels; the decision was eventually
made that they are OK.
Beyond the thujone issue, the Alcohol and Tobacco Tax and Trade Bureau (TTB) felt that the word
absinthe was a drug term, and therefore could not be used to sell
a product. This was basically an arbitrary opinion of the bureau, and
was eventually arbitrarily reversed.
With those roadblocks eliminated, absinthe was once again legal for
import and sale.
The anecdote is an interesting demonstration of how often law is
entirely unclear. We like to think that there's a list of regulations
out there, and they tell the world's bureaucrats what to do or not do,
and it's all very simple. In most cases, it really is that simple. But then
there are those other cases where it's hard to tell exactly where to
draw the line, or what authority the individual bureaucrat has.
After all, Congress (or the head of any organization) can't possibly
dictate everything that every bureaucrat all the way down the chain
will do with his or her hands. In any organization, the top
sets broad rules, and grants limited authority to the individuals at the
lower levels who will make up whatever needs to be made up along the way.
The patent office is especially prone to the conflict between top-down
law and bottom-up rulemaking, because patents are a technical field
and most of the distinctions to be made are fine line-drawing rather
than night-and-day. Under the clearest of rules, we would expect that
some applications would still be considered novel and non-obvious by
one examiner and rejected by another.
Further, patent law is, more than other fields of law, decided by judicial
rulings, not by the U.S. Code. Congress hasn't bothered to touch the law
for patents in any significant way since 1952, and you can see why from
the massive, ineffective effort that has been the Patent Reform Act of
2008. Instead, we have centuries' worth of rulings, each about a single
test patent (sometimes several), and a resulting rule based on the test
patent regarding how to draw the line between the patentable and
unpatentable. Judges try to be careful, but it's common enough that two
rulings will contradict each other.
Naturally, there are many efforts and mechanisms to create
standardization, and there is largely one patent law. For example, there
is a Manual of Patent Examination Procedure (not written by anybody in
Congress or the courts) that examiners are expected to follow with perfect
uniformity. But to a great extent, the concept of one patent law is just
a convenient fiction, and every examiner has a slightly different concept
of what's going on. As with the change in opinions regarding absinthe,
things can go from illegal to legal with just a change of opinion by a
bureaucrat somewhere along the chain. That's how it is with a law built
from the ground up on judgment calls like what is novel and non-obvious,
and how it always will be.