Re: SFLC: "a penumbra"

[rjack]

Alexander Terekhov wrote:

> ---------
> FOR IMMEDIATE RELEASE
>
> Software Freedom Law Center Files Brief with Supreme Court Arguing
> Against Software Patents
>
> Brief Filed in Microsoft v. AT&T
>
> NEW YORK, December 15, 2006 -- The Software Freedom Law Center (SFLC),
> provider of pro-bono legal services to protect and advance Free and Open
> Source Software, today filed a brief with the United States Supreme
> Court arguing against the patenting of software.
>
> In the case Microsoft v. AT&T, the Supreme Court will decide whether
> U.S. patents can apply to software that is copied and distributed
> overseas. The Court of Appeals for the Federal Circuit, a specialized
> patent court known for allowing patents on software and business
> methods, originally decided in favor of AT&T, expanding the
> international reach of U.S. software patents. Microsoft appealed, and
> the Supreme Court agreed to hear the case.
>
> In its brief, SFLC argues that software copied and distributed outside
> the United States cannot infringe U.S. patents. The brief also argues
> that the Federal Circuit's decisions declaring software to be patentable
> subject matter conflict with Supreme Court precedent and, as such,
> should be overruled.
>
> "I expect many people will be surprised that the Software Freedom Law
> Center has filed a brief with the Supreme Court in support of
> Microsoft," said Daniel Ravicher, SFLC Legal Director. "In this specific
> case, Microsoft and SFLC are both supporting the position that U.S.
> software patents have no right to cover activity outside of the United
> States, especially in places that have specifically rejected software
> patents."
>
> In Supreme Court decisions, the explanation for deciding a case is
> almost always more important than the outcome of the particular case at
> hand. In this case, the Court's decision will determine whether U.S.
> software patents can be used to restrict software development,
> distribution and use throughout the rest of the world. The ruling may
> also decide whether software patents are even legally allowed to exist
> in the United States.
>
> "In contrast to the Federal Circuit, the Supreme Court has maintained
> limits on patentable subject matter throughout U.S. history," said Eben
> Moglen, Executive Director of SFLC. "The Supreme Court has consistently
> ruled that algorithms and mathematics cannot be patented. Since software
> is expressed as mathematical algorithms, it should not be patentable."
>
> Software patents are an important issue for developers and users of Free
> and Open Source Software. The Software Freedom Law Center, along with
> other organizations, hosted a conference at MIT and Boston University in
> November that addressed the legal, economic and social consequences of
> software patents.
>
> SFLC's brief is available on the Web here.
>
> About the Software Freedom Law Center
>
> The Software Freedom Law Center -- chaired by Eben Moglen, one of the
> world's leading experts on copyright law as applied to software --
> provides legal representation and other law-related services to protect
> and advance Free and Open Source Software. The Law Center is dedicated
> to assisting non-profit open source developers and projects. For
> criteria on eligibility and to apply for assistance, please contact the
> Law Center directly or visit the Web at http://www.softwarefreedom.org. 
> ---------
>
> regards,
> alexander.



The assertion by the Software Freedom Law Center that:

“I. Software Cannot Be A “Component[] Of A Patented Invention” Under § 
271(f) Because Software Is Not Patentable Subject Matter Under § 101.”

contradicts the Supreme Court:

“In contrast, the respondents here do not seek to patent a mathematical 
formula. Instead, they seek patent protection for a process of curing 
synthetic rubber. Their process admittedly employs a well-known 
mathematical equation, but they do not seek to pre-empt the use of that 
equation. Rather, they seek only to foreclose from others the use of 
that equation IN CONJUNCTION WITH all of the other steps in their 
claimed process.” Diamond v. Diehr, 450 US 175, 187.

The Federal Circuit was somewhat confusing when it ruled:

“Without question, software code alone qualifies as an invention 
eligible for patenting under these categories, at least as processes. . 
. Thus, this software code claimed IN CONJUNCTION WITH a physical 
structure, such as a disk, fits within at least those two categories of 
subject matter within the broad statutory label of “patented invention.”

Note what the Supreme Court said in Diamond v. Diehr about patent “claims”:

“We think this statement in Mackay takes us a long way toward the 
correct answer in this case. Arrhenius' equation is not patentable in 
isolation, but when a process for curing rubber is devised which 
incorporates in it a more efficient solution of the equation, that 
process is at the very least not barred at the threshold by 101.

In determining the eligibility of respondents' claimed process for 
patent protection under 101, their claims must be considered as a whole. 
It is inappropriate to dissect the claims into old and new elements and 
then to ignore the presence of the old elements in the analysis. This is 
particularly true in a process claim because a new combination of steps 
in a process may be patentable even though all the constituents of the 
combination were well known and in common use before the combination was 
made. The "novelty" of any element or steps in a process, or even of the 
[450 U.S. 175, 189]   process itself, is of no relevance in determining 
whether the subject matter of a claim falls within the 101 categories of 
possibly patentable subject matter.” Diamond, supra.

One must be careful to define “Component[]” in context.