From: mcgregor@netcom.com (Scott Mcgregor)
Subject: Re: Patents: What they are. What they aren't. Other factors.
Organization: Netcom - Online Communication Services (408 241-9760 guest)
Distribution: na
Date: Sat, 3 Oct 1992 08:31:04 GMT

In article <1992Oct2.160835.10020@mdd.comm.mot.com> kelsey@mdd.comm.mot.com (Joe Kelsey) writes:

>The modem he claims above describes the exact same *patentable* device as the
>Diamond vs. Diehr ``rubber curing'' patent -- you can patent the device
>itself, but that patent provides no special protection to the algorithm used
>within the device. 

I'm not an industrial chemist nor a licensed patent attorney, but my
reading of this is that Diamond vs. Diehr is *NOT* a device patent
case but a *PROCESS* case. To the extent that a device can be
identified at all, it is a nonspecific generic industrial oven with
electronically settable time and temperature. This device is either
not patented or the patent is owned by someone else not filing suit,
or is not the subject of this patent suit. (If there is an industrial
chemist reading that could comment on the device, or a licensed
patent attorney that could comment on the accuracy of these
statements, I would like to hear it).  My further interpretation is
that the courts did not specifically protect "the algorithm" but they
did specifically protect "the process" which was mediated by having
the steps stored as a program in a general purpose computer used as an
industrial  controller. So you are free to run the exact same program
and hook up the RS-232 ports to a computer controlled refrigerator and
make Jello instead (i.e. the algorithm is not protected), but you
can't use it in a different computer attached to a different oven to
make rubber.   

>This means that I can then use the same algorithm to
>perform data transformations for whatever purpose I want and unless I package
>the algorithm into a device which exactly performs the same electrical
>transformations (i.e., has an RS232 port on one side and an RJ11 port on the
>other with a ``black box'' in the middle), my software does not
>infringe!

Yes. I believe that something like that may be the case. IF the
specific claims make reference to a "modem" and "RS232" ports, "RJ11
ports" and a black box or CPU. By the doctrine of equivalents though, I
think you would be at risk if you merely swapped in a RS422 port or even
a SCSI parallel port for the RS232. The patent writer might have been
a bit cleverer and specified "a control line connected to a CPU
connected to a second control line" and saying the object of the
device is "to convert a signal of a certain length on the input
control line to a signal of a reduced length on the output line from
which the former signal can be accurately reproduced by reversing the
process", then I think you might be able to get broader coverage and
cover both the modem use AND the disk use because both have control
lines (one is connected to a disk head and the other to an RJ11 port.

But if by some miracle this exact same algorithm could as a
side-effect do something else useful unrelated to "signals of a
reduced length" then I think that would not be covered. For instance,
using this for ENCRYPTION of a signal might not be covered since that
is a different object than was specified.  

So, if you are working on encryption, and you don't even know what LZW
is, and you unintentionlly re-invent it, you don't need to do a patent
search on data compression in this example, to protect yourself.  You
only need to search on the area of encryption. The compression patent
wouldn't count against you even though it is the same algorithm.  Of
course, there still appears to be disagreement as to whether this
proposed case is equivalent to the LZW claims or not.

>  Now I can ignore him if he ever tries to claim a
>patent on software in the future, since he just stated that you can't patent
>software!

Joe is free to ignore whatever I state, to his advantage or peril as
things play out.  But his statement is not an accurate paraphrase of
what I said. I did state you can't patent an algorithm.  But I did not
claim that you can't patent software. Joe and Dan claim that software
and algorithm are equivalent terms, so I can understand how this
incorrect paraphrase came about. I'm using software to mean not just
the algorithm, but its application to a real world problem.  I'm using
software to mean a "process" (in the patent sense, not CS sense).
Maybe they don't like my use of "software" in this way. Say software
"application"  if you like. If I ever write a patent application I
will claim a specific physical world benefit from the application of the
software (including its underlying algorithms).  If someone else uses
those algorithms for a different unforseen purpose such as curing
rubber or making Jello, I don't think the patent would cover them, and
I would therefore be very hesitant to spend good money to file suit. 
But if some big company uses the same algorithm to achieve the same ends in a 
product that competes with mine, I might be tempted to hit them up for a 
license.
-- 

Scott L. McGregor		mcgregor@netcom.com
President			tel: 408-985-1824
Prescient Software, Inc.	fax: 408-985-1936
3494 Yuba Avenue
San Jose, CA 95117


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