The courts have gone back and forth in rulings about patentability of software-based inventions, sometimes ruling that a system that uses a computer and programming, a tangible media with computer instructions, or a method involving computers, software or processing, etc., is patentable subject matter under 35 USC §101, and sometimes that is not.  See, for example, Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (2011), CLS Bank International v. Alice Corp. (Fed. Cir. 2013) (en banc), and/or ULTRAMERCIAL v. HULU , LLC (Fed. Cir. 2013), all of which are discussed in our previous blog entries.  I’d like to set forth a thought experiment as an hypothetical case in favor of patentability of software-based inventions.  Mind you, in an actual case, patentability will depend on a multitude of factors, such as whether the claimed invention is: a member of a patentable class of subject matter (the present inquiry, under 35 USC §101), novel (under 35 USC §102), unobvious (under 35 USC §103), and distinctly claimed, i.e., not indefinite, and enabled in the specification (under 35 USC §112), among other requirements.

Suppose an inventor has invented two blackboxes, the first of which has inside a computer programmed with software, and the second of which is entirely mechanical.  The inventor discloses that these two inventions are based on an abstract idea, namely some equation or algorithm.  The mechanical blackbox has a series of buttons and dials, which the user sets to represent input information in answer to a set of questions.  The user then presses a large “start” button, and the machine hums, clanks and whirs.  Out from the slot, a printed message emerges, containing a printout of some useful result.  This is clearly a machine that is in the class of patentable subject matter under 35 USC §101.  This machine is a concrete reduction to actual practice of an embodiment of an invention based on an abstract idea.

The second blackbox has an identical series of buttons and dials, except perhaps these are implemented as soft buttons and images of dials on a touchscreen.  The user sets these buttons and dials in a similar manner, then presses a large “start” button (which could also be a soft button).  Next, the machine makes a different set of noises, perhaps from a speaker or maybe just the hum of a fan of a computer.  Out from a slot, a printed message emerges, or perhaps the message appears on a viewscreen, and the message includes the exact same useful result as seen from the first blackbox.

In first blackbox, the inventor tells us, a combination of gears, levers, cams, mechanical counters, forks and other beautifully machined parts implements the equation or the algorithm.  For example, one lever moves from left to center to right to implement an if/then/else logical construct, a series of gears reduce or multiply shaft speeds in accordance with a numerical ratio, a cam activates different portions of the machine in a sequence and so on.  These same gears, levers etc. in other combinations have been used in other machines, starting in the late 1800s.

In the second blackbox, the inventor tells us, a combination of program statements, i.e., a computer program in software, executing on a processor with memory, implements the exact same equation or algorithm.  Electrons are steered this way and that by transistors, and the whole thing implements the exact same if/then logical construct, the exact same numerical ratio, and progresses in the exact same sequence, and so on.

Why wouldn’t the second blackbox also be a machine that is in the class of patentable subject matter under 35 USC §101?  It took a comparable amount of cleverness to come up with each of these embodiments.  Yes, the machines required different skills to implement, but each of these two machines is a concrete reduction to actual practice of an embodiment of an invention based on an abstract idea.  The second blackbox is, in my mind, no less inventive than the first blackbox.  The two black boxes produce the exact same useful result.  They are, simply, two differing embodiments of the same invention.  Now, arguably, one could probably find something clever that the mechanical machine did in all of this that might be patentable in and of itself, and equally, one could possibly find something clever in what the software did in all of this that might be patentable in and of itself.  But, in the larger picture, I suggest, both machines should be considered eligible subject matter under 35 USC §101.  Hypothetically, if the first blackbox were ruled eligible subject matter under 35 USC §101, and the second blackbox were ruled ineligible subject matter under 35 USC §101, might the second ruling be appealable?  This is what the courts are wrestling over these days, for software-based inventions.  It would seem unusual for an entirely mechanical invention to have an issued patent invalidated for claiming ineligible subject matter under 35 USC §101.  Not so, apparently, for software-based inventions.  Why the dichotomy?  In a subsequent blog, we’ll tackle some of the questions the justices raise in the above cases, relative to these two hypothetical black boxes.