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: usa
Date: Sat, 3 Oct 1992 07:49:29 GMT

In article <1992Oct2.212906.18005@mdd.comm.mot.com> kelsey@mdd.comm.mot.com (Joe Kelsey) writes:

>No.  He clearly says that both processes involve physical actions but that he
>considers the physical action in the data compression process as legally
>``inessential'', and I agree with him.  The rubber curing patent allows a
>machine to control the process of curing rubber, but it does not provide any
>protection to the software used in the computer controlling the rubber curing
>process!  This means that I can use the same algorithm for a different process
>without infringing the patent!


Are you allowing only patents on devices? My understanding of the Diamond vs.
Diehr case involved a PROCESS, not a device.  The "machine" (to the
extent that a single machine can be identified) was a nonspecific
industrial oven that could be computer controlled.  The machine is
either not patentable, someone elses patent, or not the subject of
this particular case. 

It is claimed by Bernstein and others that the LZW patent really
claims the "algorithm" and not a particular hardware embodiment. My
view is that a) this is incorrect, it only claims a particular
physical process embodied in certain kinds of hardware, and b) that if
it really does claim more than this that this extension will not and
should not be upheld.  However, I don't think that should invalidate
its application to the SPECIFIC physical embodiment mentioned in the patent.

>On the other hand, the LZW (and MW, and Jung,..) claim more than just a
>specific transformation of data.  They claim as patentable the very *idea* of
>manipulating data using a specific set of formulae.  Thus, the physical
>process becomes *inessential* to the patent claim, and, as Dan points out, the
>courts consider this an unpatentable process.

I disagree that they really claim the "idea". But if they did, I would
agree that this makes the physical aspects inessential, just as Dan
says. But since I don't agree with his antecedent, I don't reach his
consequent either.  We disagree about what the patent really covers,
and that's why we disagree whether those aspects are essential or inessential.

>Consider your heat example.  I can patent a steam engine which uses a boiler
>to produce steam to drive a piston to eventually turn a wheel.  You can still
>take the boiler and use it to produce steam to heat your house *without
>infringing my patent*!  I did not receive a patent on heat or even on the
>transformation of heat, but on the use of that transformation to do work.

Exactly so.  However, it is also possible to patent a process, without
patenting the device.  You might attempt to patent a process "to
safely raise the temperature of a boiler." A benefit of this may be:
"a) to warm a house and b) in combination with devices that can drive a
piston, to do useful work". Then you would describe a process: "take
some water, place in a (nonpatented) sealed boiler, place boiler above
a combustable material, light the combustable material...etc."
(admittedly this is too obvious for a patent, but you get the idea).
Are the boiler and combustable material essential or inessential to
the process? You can describe the steps without having them, but you
can't achieve the benefits without them. This still isn't a patent on
"heat" itself or the algorithm steps.  But it is a patent on a
process that transforms heat that covers two or more benefits. 

Meta observation: In these anti-software patent debates, what is
frequently proposed as allowable is a "device patent".  Software
patents are usually "process patents".  When software patent opponents
describe physical process patents (such as from Diamond vs. Diehr)
they frequently introduce into the description the notion of a machine
or device that isn't in fact covered by the patent.  What I am
wondering is if anyone can give me a description of a physical process
patent consisting of a set of steps that can be performed by
non-patented devices, that they would be comfortable with allowing to
be patented REGARDLESS OF WHETHER those steps were recorded as a
program in some industrial controller (general purpose workstation) or
by an operator with a clipboard setting manual switches. 

>The owners of the LZW patent claim that their patent covers any use of the
>algorithm at all, not just its use in the claimed device.

I don't agree that they claim "the algorithm". I agree they don't just
claim the device, but I think that they claim the "process" used by
the device. Even if you are correct that they are claiming an
algorithm, I think it likely this would not be fully upheld, but would
be narrowed to covering a physical process or processes.  It may be
that these are all the known useful applications of this algorithm to
physical devices.

> They want to
>broaden the scope of coverage beyond a single device to include the mere
>existence of similar formulae in any computer program at all

They may WANT to have  all readers send them a check for $20, but
that doesn't mean that we are under any obligation to comply, nor that
we need to worry about it.

> and I do not
>believe that they have the right to do this

I agree, but I don't think that means they don't have the right to
enforce the patent for the specific embodiments that they DID claim.
I think that Dan Bernstein believes that even the claimed application 
(e.g. embodiment in a disk controller) should not be allowed. 

-- 

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